Christmas Place, Inc. v. Pham Dinh Nhut
Claim Number: FA1412001597046
Complainant is Christmas Place, Inc. (“Complainant”), represented by Michael J. Bradford of LUEDEKA NEELY GROUP, P.C., Tennessee, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <christmasplaceinn.com>, registered with April Sea Information Technology Corporation.
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 December 27, 2014; the National Arbitration Forum received payment on December 27, 2014. The Complaint was submitted in both English and Vietnamese.
On January 6, 2015, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <christmasplaceinn.com> domain name is registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the name. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 January 9, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2015 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@christmasplaceinn.com. Also on January 9, 2015, 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 February 5, 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 name be transferred from Respondent to Complainant.
A. Complainant
(i) Complainant owns trademark registrations for THE INN AT CHRISTMAS PLACE with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,336,434, registered Nov. 13, 2007, filed Aug. 25, 2005). Complainant has also registered CHRISTMAS PLACE with the USPTO (Reg. No. 2,006,068, registered Oct. 8, 1996). Complainant uses the marks to identify its four-star hotel located in the foothills of the Smoky Mountains in East Tennessee. The <christmasplaceinn.com> domain name is confusingly similar to the CHRISTMAS PLACE and THE INN AT CHRISTMAS PLACE marks. The addition of the generic top-level domain (“gTLD”), removal of a spacing, and removal of an article and preposition, are without legal significance to mitigate the confusingly similarity.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized to use the CHISTMAS PLACE or THE INN AT CHRISTMAS PLACE marks in any way. Further, there is no indication that Respondent is commonly known by the disputed domain name. Instead, the WHOIS information lists “Pham Dinh Nhut” as registrant. In addition, Respondent’s use of the disputed domain name is not for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The disputed domain name resolves to a commercial website promoting links to third-party competitors of Complainant.
(iii) Respondent has engaged in bad faith registration and use. Respondent has a pattern of registered domain names in bad faith, which permeates the present case via Policy ¶ 4(b)(ii). Further, Respondent’s bad faith is demonstrated by its use of the disputed domain name to misdirect visitors to Respondent’s commercial website where Respondent monetizes traffic. Such deceptive attraction for commercial gain falls within Policy ¶ 4(b)(iv) bad faith. Respondent registered the disputed domain name with actual and/or constructive knowledge, which demonstrates bad faith.
B. Respondent
Respondent did not submit a Response. The Panel notes that the disputed domain name was registered June 17, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.”).
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
Complainant claims to own trademark registrations for THE INN AT CHRISTMAS PLACE with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,336,434, registered Nov. 13, 2007, filed Aug. 25, 2005), as well as CHRISTMAS PLACE, which is similarly registered with the USPTO (Reg. No. 2,006,068, registered Oct. 8, 1996). Complainant uses the marks to identify its four-star hotel located in the foothills of the Smoky Mountains in East Tennessee. The Panel determines that Complainant’s valid trademark registrations with the USPTO sufficiently demonstrates Complainant’s rights in the marks for purposes of Policy ¶ 4(a)(i), despite Respondent’s purported residence in Vietnam. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues that the <christmasplaceinn.com> domain name is confusingly similar to the CHRISTMAS PLACE and THE INN AT CHRISTMAS PLACE marks. Specifically, Complainant claims the addition of the gTLD “.com,” removal of a spacing, and removal of an article and preposition, are without legal significance so as to mitigate the confusingly similarity. Complainant adds that movement of the INN-portion of the THE INN AT CHRISTMAS PLACE mark to the end is not a distinguishing alteration. Prior panels have determined that the removal of articles or prepositions frequently fail to distinguish a domain name from a otherwise included mark, and that the inversion of terms within a mark similarly does little to negate confusion. See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL). Further, panels have determined that the removal of spacing and addition of a gTLD are inconsequential to the confusing similarity analysis as spacing is not replicable in domain names and all domain names require some TLD. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel determines the <christmasplaceinn.com> domain name is confusingly similar to the THE INN AT CHRISTMAS PLACE mark pursuant to 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant explains that Respondent is not authorized to use the CHISTMAS PLACE or THE INN AT CHRISTMAS PLACE marks in any way. Further, Complainant urges that there is no indication that Respondent is commonly known by the disputed domain name. Instead, Complainant points out the WHOIS information, which lists “Pham Dinh Nhut” as registrant. In light of this evidence, which is not rebutted by a response, the Panel determines there is no basis to find Respondent commonly known by the disputed domain name as envisioned by Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the 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 the respondent was commonly known by the disputed domain name).
In addition, Complainant argues that Respondent’s use of the disputed domain name is not for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant explains that the disputed domain name resolves to a commercial website promoting links to third-party competitors of Complainant, and presumes that Respondent generates click-through revenue from the featured links. The Panel notes that the disputed domain name resolves to promote such links as “Tennessee Hotels,” “Wingate Wyndham Hotels,” and “Pigeon Forge Cabin Rentals.” See Compl., at Attached Ex. E. As the disputed domain name resolves to promote commercial links to competitors of Complainant in the realm of lodging accommodations, the Panel finds that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent has a pattern of registered domain names in bad faith, which permeates the present case via Policy ¶ 4(b)(ii). The Panel notes that Complainant has provided a list of several WIPO cases from last year in which Respondent has found to have engaged in bad faith registration and use. See Compl., at Attached Ex. B; e.g., Pham Dinh Nhut / Vietnam Domain Privacy Services, D2014-0474 (WIPO June 16, 2014). The Panel agrees that these prior decisions satisfy the pattern requirement of Policy ¶ 4(b)(ii), and therefore finds evidence of Respondent’s continued bad faith in the present case. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Further, Complainant argues that Respondent’s bad faith is demonstrated by its use of the disputed domain name to misdirect visitors to Respondent’s commercial website where Respondent monetizes traffic. Complainant claims that such deceptive attraction for commercial gain falls within Policy ¶ 4(b)(iv) bad faith. The Panel recalls that the disputed domain name resolves to feature links relating to lodging accommodations, such as “Tennessee Hotels,” “Wingate Wyndham Hotels,” and “Pigeon Forge Cabin Rentals.” See Compl., at Attached Ex. E. The Panel agrees that Respondent’s conduct falls within the parameters of Policy ¶ 4(b)(iv) as the disputed domain name redirects users to links of Complainant’s competitors, and Respondent likely generates revenue through user confusion. 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).”).
Lastly, Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge, which demonstrates bad faith. While previous panels have been hesitant to find evidence of bad faith based on constructive knowledge, panels have inferred actual knowledge where the circumstances warrant. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel is willing to infer Respondent had actual knowledge of Complainant and its CHRISTMAS PLACE and/or THE INN AT CHRISTMAS PLACE marks at the time of domain registration, and thus the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <christmasplaceinn.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 16, 2015
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