national arbitration forum

DECISION

 

IvyMedia Corp./Taketours.com v. Peter Lazarr

Claim Number: FA1406001564064

 

PARTIES

Complainant is IvyMedia Corp./Taketours.com (“Complainant”), represented by Maria Ibarra, Massachusetts, USA.  Respondent is Peter Lazarr (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <taketour.com>, registered with easyDNS Technologies Inc.

 

PANEL

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2014; the National Arbitration Forum received payment on June 11, 2014.

 

On June 17, 2014, easyDNS Technologies Inc. confirmed by e-mail to the National Arbitration Forum that the disputed domain name <taketour.com> is registered with easyDNS Technologies Inc. and that Respondent is the current registrant of the name.  easyDNS Technologies Inc. has verified that Respondent is bound by the easyDNS Technologies 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 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@taketour.com.  Also on June 18, 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.

 

A timely Response was received and determined to be complete on July 6, 2014.

 

On July 10, 2014, an Additional Submission was filed by Complainant in compliance with Supplemental Rule 7.

 

On June 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

a.    Complainant registered the trademark TAKETOURS before the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,966,208 registered May 24, 2011). See Complainant’s Exhibit A.

b.    Complainant uses the trademark TAKETOURS to identify online trip and travel reservation services, as well as travel and tour ticket reservations.

c.    Complainant uses its trademark TAKETOURS in Complainant’s domain name <taketours.com>, as an online market place for tour and vacation services from a wide range of suppliers.

d.    Respondent’s disputed domain name <taketour.com> is confusingly similar to Complainant’s trademark TAKETOURS.

e.    Respondent has no rights or legitimate interests in the disputed domain name <taketour.com>.

f.      On August 28, 2012 Complainant was granted a preliminary injunction against Take Tour Inc. from the US District Court of Massachusetts ordering the latter an immediate suspension of the disputed domain name <taketour.com> and cease and desist any use of it.

g.    During the litigation process, the former domain owner, Take Tour Inc., transferred the disputed domain name to a new registrant (Respondent), Peter Lazarr, in violation of the Court order. See Complainant’s Exhibits B and C.

h.    Respondent uses the disputed domain name <taketour.com> to compete with Complainant by offering identical and confusingly similar online travel services.

i.      Respondent registered and is using the disputed domain name <taketour.com>in bad faith.

j.      Prior to the Court order on August 28, 2012, the disputed domain name <taketour.com> resolved to a website containing much of the web content taken verbatim from Complainant’s <taketours.com> website. Some of the copied material included original tour descriptions, tour and vacation packages, user agreements, security statement, tour policies, tour “FAQ” and “Q&A” sections.

k.    Respondent uses the disputed domain name to compete with Complainant, thus disrupting Complainant’s business.

l.      Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark TAKETOURS, and the services offered on Complainant’s website.

m.   Respondent is attempting to profit from the good will associated with Complainant’s trademark.

 

B.   Respondent

a.    Respondent uses the disputed domain name <taketour.com> as a real estate tour website for customers to view real estate properties online. Respondent has no intentions of using the disputed domain name in any other unrelated way.

b.    Respondent purchased the disputed domain name on August 30, 2012, and has used it exclusively for real estate business since that day. Respondent does not sell any products through the disputed domain name.

c.    Respondent does not intend to commercially gain from the use of the disputed domain name <taketour.com>, and does not misleadingly divert consumers or tarnish Complainant’s mark.

 

C.   Complainant’s Additional Submissions

a.    On August 28, 2012, Complainant obtained a Preliminary Injunction against Take Tour Inc (taketour.com) which ordered to “immediately suspend operation of the www.taketour.com website and cease and desist any use of it”. See Complainant’s Exhibit B.

b.    On August 30, 2012, Take Tour Inc, breaching the Preliminary Injunction, transferred the disputed domain name to a new Registrar and to a new Registrant under Canadian address to evade US Laws. See Complainant’s Exhibit C.

c.    Taketour.com is not being used for real estate purposes as stated by Respondent.

d.    The real estate website layout provided by the Respondent is owned by a live and legit business, http://www.visualtour.com/, which belongs to a completely different registrant named Steve Jarrell. See Complainant’s Additional Submission Exhibit B.

e.    The domain in dispute is currently listed for sale on sedo.com. See Complainant’s Additional Submission Exhibit C. This demonstrates that the disputed domain name is not being used for the declared purposes and there is no real intention to do genuine business with it.

f.      IvyMedia Corporation obtained a Final Judgment against Take Tour Inc. from the US District Court of Massachusetts that orders “to have the ownership of the domain name, www.taketour.com transferred to the plaintiff, IVYMEDIA CORPORATION”. See Complainant’s Exhibit F.

f.

FINDINGS

1.    Complainant owns the trademark TAKETOURS in the United States of America, since May 24, 2011.

 

2.    The disputed domain name is confusingly similar to the trademark TAKETOURS.

 

3.    Respondent does not use the disputed domain name as stated in the Response, but has it parked and is offering it for sell. Thus, before any notice, Respondent neither used the disputed domain name nor demonstrated that preparations have been made in connection with a bona fide offering of goods or services.

 

4.    Respondent acquired the disputed domain name and is using it in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instruct 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.

 

Identical and/or Confusingly Similar

 

Complainant contends it is the owner of the trademark TAKETOURS in the United States of America to identify services such as: “online trip and travel reservations services; travel and tour ticket reservation service” within international class 39. 

 

i)     Existence of a trademark or service mark in which Complainant has rights

 

Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights.  As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.

 

The generally accepted definition of a trademark, involves the concept of a distinctive force as the most relevant element.  It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it. 

 

However, the UDRP does not discriminate between registered and unregistered trademarks^[1] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy.  It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce. 

 

In this case, Complainant has proven its rights in the trademark TAKETOURS (Exhibit A to the Complaint), as follows:

 

ü Trademark                :            TakeTours

ü Registration No.       :            3,966,208

ü Registered on           :            May 24, 2011

ü International class    :            39

ü Services                    :             Online trip and travel reservations services; travel and tour ticket reservation service 

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services.  The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark TAKETOURS for purposes of Paragraph 4(a)(i) of the Policy.

 

ii)    Identity or confusing similarity between the disputed domain name and Complainant’s trademark

 

Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark TAKETOURS.

 

In the first place, before establishing whether or not the disputed domain name <taketour.com> is confusingly similar to Complainant’s trademark TAKETORUS, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark.^[2]   

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights.  In the proceedings of Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, WIPO Case No. D2000-0477, the panel stated that:

 

“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.

 

Furthermore, the Panel believes that the disputed domain name <taketour.com> is confusingly similar to the trademark TAKETOURS as per the typical UDRP criteria.  The Panel considers that the reproduction of the trademark TAKETOURS, by the disputed domain name <taketour.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark^[3].  Specially since the disputed domain name reproduces Complainant’s trademark without any other distinctive elements. The difference between the trademark and the disputed domain name is and “S” at the end of a trademark which any consumer would assume to be the plural of the same sign.  Consequently, consumers will presume that the owner of the disputed domain name is the owner as well of the trademark TAKETOURS.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name <taketour.com> is confusingly similar to Complainant’s trademark TAKETOURS and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[4].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[5].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <taketour.com>  because of the following: i) Respondent has not been authorized by Complainant to use the TAKETOURS trademark in any manner; ii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain name is parked since August 30, 2012; and iii) Complainant was granted a Final Judgment by a Court of Law (Exhibit F of the Complaint) which provides: “to have the ownership of the domain name, www.taketour.com transferred to the plaintiff, IVYMEDIA CORPORATION,” thus, Complainant is the only entity with rights to the disputed domain name.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent’s rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:

 

(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent states that he uses the disputed domain name <taketour.com> as a real estate tour website for customers to view real estate properties online and has no intention of using the disputed domain name in any other unrelated way.

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name <taketour.com>. Simply stating what it supposedly offers, is not evidence of Respondent’s rights or legitimate interest in it.

 

Moreover, Respondent’s alleged use of the disputed domain name was rebutted, discredit and disapproved by Complainant, as Respondent evidence referred to a website unrelated to the disputed domain name <taketour.com> whatsoever.

 

Respondent had the opportunity to dismiss Complainant’s arguments one by one but chose not to do it. Thus, based on Complainant’s allegations and evidence, on Respondent’s exhibits and on Respondent’s absence of response to Complainant’s arguments, the Panel considers that Respondent is not and has not used the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name has been unused since Respondent acquired it. Consequently, Respondent is either making a legitimate noncommercial or fair use of the disputed domain name.

 

Furthermore, Respondent did not provide any proof that he has been commonly known by the disputed domain name.

 

Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.

 

Regarding Complainant’s rights, the Panel notes that given the Preliminary Injunctions and the Final Judgment (Exhibits B and F of the Complaint) concerning the disputed domain name, the Court for the District of Massachusetts entitled Complainant to have exclusive rights and/or legitimate interests in the disputed domain name, excluding any former or current owner of said privileges.

 

Paragraph 4 of the Final Judgment (Exhibit F of the Complaint) provides: “to have the ownership of the domain name, www.taketour.com transferred to the plaintiff, IVYMEDIA CORPORATION.”

 

The Panel further notes that Respondent did not refer to Complainant’s allegations with reference to the Preliminary Injunctions and the Final Judgment, did not deny to have knowledge of the court proceeding related to the disputed domain name and its previous owner, and failed to submit any evidence to disregard the Final Judgment. Such conduct allows the Panel to conclude Respondent’s knowledge of the proceeding initiated by Complainant against TAKE TOUR, INC., ALAN ZOU & JOHN DOE.

 

Thus, Respondent lacks of any right or legitimate interest and Complainant established to be the exclusive holder of rights and/or legitimate interests in the disputed domain name <taketour.com>. 

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

Respondent claimed to be using the disputed domain name as a real state tour site and that he does not intend to use the disputed domain name in any other unrelated business. However, Respondent’s evidence shows that the alleged use does not correspond to the disputed domain name <taketour.com> (Print out of the website http://www.visualtour.com/, Exhibit to the Response) and as per the evidence filed by Complainant in its Additional Submission Exhibit C, Respondent pretends to sell the disputed domain name.

 

Furthermore, the evidence shows that the disputed domain name <taketour.com> has been unused since the transference to Respondent (Exhibit C to the Complaint).

 

As stated by the panel in State Farm Mut. Auto. Ins. Co. v.  Sotelo d/b/a Toltec[6], the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the disputed domain name <taketour.com> is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).[7]

 

Thus, the Panel considers that Respondent obtained and is using the disputed domain name primarily for the purpose of disrupting the business of a competitor and preventing the owner of the trademark from reflecting its sign in the disputed domain name.

 

Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes bad faith usage under paragraph 4(b) of the Policy. 

 

Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the disputed domain name <taketour.com> be TRANSFERRED from Respondent to Complainant.

 

Fernando Triana, Esq. Panelist

Dated:  July 18, 2014

 

COLO 1308 0960 65741/SÁG

4290210367503