LATE ROOMS LTD v. zhu xumei
Claim Number: FA1702001717537
Complainant is LATE ROOMS LTD (“Complainant”), represented by Dan Smith of Safenames Ltd., United Kingdom. Respondent is zhu xumei (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laterooms.us>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2017; the Forum received payment on February 16, 2017.
On Feb 16, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <laterooms.us> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 February 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2017 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@laterooms.us. Also on February 17, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant registered the LATE ROOMS.COM mark with the World Intellectual Property Office (“WIPO”) (e.g., Reg. No. 899,116, registered Aug. 1, 2006). See Compl., at Attached An. 6. The registration does include the United States. Respondent’s <laterooms.us> mark is confusingly similar as it merely removes the space between “Late” and “Rooms” and changes the generic top-level domain (“gTLD”) “.com” to the country code top-level domain (“ccTLD”) “.us”.
2. Respondent has no rights or legitimate interests in <laterooms.us>. Respondent is not commonly known by the LATE ROOMS.COM mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services because the domain name directs the user to at least two different websites in direct competition with Complainant. See Compl., at Attached An. 9. Respondent likely does this to receive some form of referral fees.
3. Respondent registered and uses the <laterooms.us> in bad faith. Respondent uses the domain name to redirect users seeking
Complainant’s services to websites in direct competition with Complainant, likely for financial gain. See Compl. at Attached An. 9. Additionally, in response to Complainant’s cease and desist letter, Respondent offered to sell the domain name to Complainant for $2,000. See Compl. at Attached An. 12. Additionally, Respondent has engaged in serial cybersquatting, with at least 196 previous adverse decisions against it. See Compl. at Attached An. 10. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark because the mark has a strong reputation and presence worldwide, and because Respondent redirects users to websites offering similar services.
B. Respondent
1. Respondent did not submit a Response in this Proceeding.
1. Respondent’s <laterooms.us> domain name is confusingly similar to Complainant’s LATE ROOMS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <laterooms.us> domain name.
3. Respondent registered or used the <laterooms.us> 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(f), 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 (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 operates a webpage to book hotel reservations providing discounted accommodation throughout the United States, the United Kingdom, and various other countries throughout Europe. Complainant was one of the first online businesses in the United Kingdom, beginning operations in 1999. Complainant claims it registered the LATE ROOMS.COM mark with the WIPO (e.g., Reg. No. 899,116, registered Aug. 1, 2006). See Compl., at Attached An. 6. Registering a mark with a trademark authority demonstrates rights to a mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Thus, the Panel agrees that Complainant has established rights in the mark under Policy ¶4(a)(i).
Next, Complainant argues that Respondent’s <laterooms.us> is confusingly similar to Complainant’s mark as it removes the space from Complainant’s complete mark and changes the gTLD to the ccTLD “.us”. Similar changes to marks have not been held sufficiently distinguishable. Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Similarly, Panels have held that adding a ccTLD is irrelevant to an analysis of confusing similarity. See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). Respondent created a domain name using the LATE ROOMS.COM mark, omitting the space, and changing the gTLD “.com” to the ccTLD “.us”. Therefore, the Panel agrees that Respondent has not included elements in the disputed domain name that would provide distinction from Complainant’s 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 (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 (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 no rights or legitimate interests in <laterooms.us>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Zhu Xumei” as the registrant. See Compl., at Attached An. 1. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the LATE ROOMS.COM mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant and has never been known by the disputed domain name prior to its registration. Accordingly, the Panel agrees that Respondent is not commonly known by <laterooms.us> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the disputed domain name to redirect users to various webpages in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant lacks a bona fide offering of goods or services. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The domain name redirects prospective users to at least two different websites that directly compete with Complainant’s services. See Compl., at Attached An. 9. Complainant contends that Respondent likely does this to receive some form of referral fee. The Panel agrees accordingly that this conduct lacks a bona fide offering of goods or services.
Complainant argues that Respondent registered and is using the <laterooms.us> in bad faith by using a confusingly similar domain name to disrupt Complainant’s business by attempting to intercept users seeking its services and redirecting users to other websites offering competing services. Prior Panels have concluded that conduct of this nature may evince bad faith. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Complainant alleges that Respondent, by using a confusingly similar domain, diverts prospective users to various different landing sites that offer the same services as Complainant, while likely receiving referral fees. See Compl., at Attached An. 9. The Panel agrees that Respondent disrupts Complainant’s business to commercially benefit off the registered mark in bad faith.
Next, Complainant claims that Respondent offered to sell the disputed domain to Complainant. Offering a confusingly similar domain name for sale can evince bad faith registration. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Complainant contends that, in response to its cease and desist letter, Respondent offered to sell the domain name to Complainant for $2,000. See Compl. at Attached An. 12. The Panel uses Respondent’s offering of the domain name for sale as evidence of bad faith registration.
Complainant further alleges that Respondent engaged in serial cybersquatting. Serial Cybersquatting may evince bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant contends that Respondent has registered at least 196 other domains, all confusingly similar to famous companies. See Compl. at Attached An. 10. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith by engaging in serial cybersquatting.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, Panels have disregarded arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel may agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 contends that Respondent must have had actual knowledge of the LATE ROOMS.COM mark because it has a strong reputation and a presence worldwide, and because Respondent redirects users to websites offering similar services. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <laterooms.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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