priceline.com LLC v. Sean Chalfin / BlackScorpion Holdings, LLC - www.cyber.lease
Claim Number: FA1702001718589
Complainant is priceline.com LLC (“Complainant”), represented by Jamie E. Platkin, Esquire of Cantor Colborn LLP, Connecticut, USA. Respondent is Sean Chalfin / BlackScorpion Holdings, LLC - www.cyber.lease (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <priceline.viajes>, registered with GoDaddy.com, LLC.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2017; the Forum received payment on February 23, 2017.
On February 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <priceline.viajes> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@priceline.viajes. Also on February 23, 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.
A timely Response was received and determined to be complete on March 14, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on March 20, 2017.
Respondent’s Additional Submission was received and determined to be in compliance with the Rules on March 20, 2017.
On March 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
1. It holds several U.S. trademark registrations for the PRICELINE mark (e.g., Reg. No. 2,272,659, registered Aug. 24, 1999), establishing rights in the mark;
2. Respondent’s <priceline.viajes> is identical and/or confusingly similar to the PRICELINE mark because the mark is incorporated fully and is merely accompanied by the generic top-level domain (“gTLD”) “.viajes;”
3. the term “viajes” is Spanish for “travels”, and therefore adds confusion as Complainant operates in the travel industry;
4. Respondent has no rights or legitimate interests in <priceline.viajes>;
5. Respondent is not commonly known by <priceline.viajes>, nor has Respondent been authorized or licensed by Complainant to use the PRICELINE mark in any context;
6. Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use through <priceline.viajes> because the website sells travel bags, and also offers the domain name for lease or purchase;
7. Respondent registered and used <priceline.viajes> in bad faith;
8. Respondent’s offer for sale/lease of the domain name indicates bad faith.
9. Respondent’s offer of travel bags on the website using Complainant’s PRICELINE mark disrupts the business of Complainant, and Respondent is intentionally causing confusion for commercial gain under both Policy ¶¶ 4(b)(iii) and (iv);
10. given the fame of the PRICELINE mark, Respondent’s use of the mark in an identical domain name, and the inclusion of travel bag sales on the website show that Respondent had actual or constructive knowledge of the PRICELINE mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent contends that:
1. It concedes Complainant’s rights in the mark;
2. two common words—“PRICE” and “LINE”—cannot amount to infringing use;
3. Respondent has a legitimate interest in selling luxury leather travel bags;
4. “Viajes” is the perfect extension because Respondent’s markets are the Spanish and English markets;
5. three companies currently use PRICELINE in their domain names: <priceline.com> travel related services (Complainant), <priceline.com.au> pharmacy services (third party with whom Complainant allegedly stated “We’re in cohesion.”), and <priceline.viajes> luxury travel bags (Respondent);
6. Respondent does not compete with Complainant;
7. the confusion associated with iterations of the PRICELINE mark in commerce (PRICELINE STADIUM, PRICELINE PHARMACY) lacks the teeth to take away Respondent’s rightful ownership of <priceline.viajes>.
C. Additional Submissions
Complainant contends that:
1. Respondent’s primary argument points to the use of PRICELINE PHARMACY and PRICELINE STADIUM, both used primarily in Australia, they are confined to Australia, and concern dissimilar goods and services;
2. this use by a third party is irrelevant to the claims raised in the Complaint, which point to Respondent’s activities which violate the UDRP. Respondent is located in the USA and directs its business activities on the website associated with <priceline.viajes> in the USA;
3. common words may in fact reach a distinguishing threshold sufficient to confer trademark rights;
4. Complainant’s mark received such a determination by the United States Patent and Trademark Office (“USPTO”).
Respondent contends that:
1. the PRICELINE term was coined over 100 years ago, and that the term is generic.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used 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.
Complainant claims that it holds several trademark registrations in the United States for the PRICELINE mark (e.g., Reg. No. 2,272,659, registered Aug. 24, 1999). Respondent does not contest that Complainant has rights in this mark.
USPTO Registrations confer rights under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (Complainant’s USPTO Registrations for HAAS mark sufficiently demonstrate rights in mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has established rights in the PRICELINE mark under Policy ¶ 4(a)(i).
Further, Complainant contends that Respondent’s <priceline.viajes> is identical and/or confusingly similar to the PRICELINE mark because the mark is incorporated fully and is merely accompanied by the gTLD “.viajes.” Addition of a generic/descriptive term or TLD to a fully incorporated mark has been seen as nondistinguishing and may in fact add to confusion. See Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) <novellsolutions.com> domain name confusingly similar to NOVELL mark despite addition of descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”; see also DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (disputed domain name <dunkin.coffee> identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account).
Complainant argues that the term “viajes” is Spanish for “travels”, and therefore adds confusion as Complainant operates in the travel industry. Regardless of any connection with Complainant’s offerings under the PRICELINE mark, <priceline.viajes> is identical to the PRICELINE mark under Policy ¶ 4(a)(i).
While Respondent contends that <priceline.viajes> is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Respondent concedes Complainant’s rights in the mark. However, Respondent argues that two common words—“PRICE” and “LINE”—cannot amount to infringing use. However, this argument is not applicable 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) (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 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 argues that Respondent has no rights or legitimate interests in <priceline.viajes>. Specifically, Complainant asserts Respondent is not commonly known by <priceline.viajes>, nor has Respondent been authorized or licensed by Complainant to use the PRICELINE mark in any context. Where a respondent does not argue against this point, WHOIS information is typically seen as dispositive of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (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). Accordingly, the WHOIS of record lists “Sean Chalfin / BlackScorpion Holdings, LLC - www.cyber.lease” as Registrant, and Respondent has not argued in favor of its being commonly known by the domain name or that it is authorized to use the mark. Complainant has satisfied Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use through <priceline.viajes> because the website sells travel bags, and also offers the domain name for lease or purchase. Competitive or noncompetitive commercial use of a domain name has been considered to fail in evincing rights and legitimate interests. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). So, either way, the Panel finds that Respondent’s use of the domain name to sell “Priceline Luxury Leather Travel Bags” does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Offers to sell a domain name also fail under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant notes that Respondent has included an offer to sell/lease the domain name on the resolving website. Respondent’s willingness to part with the domain name imputes that it has not in fact intended to engage in conduct which would evince rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used <priceline.viajes> in bad faith. First, Complainant argues that the offer for sale/lease of the domain name indicates Policy ¶ 4(b)(i) bad faith. General offers included on a resolving website may be sufficient under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel may note Complainant’s, displaying the message, ““If you are interested in leasing the priceline domain, contact Cyber Lease for details.” Complainant also asserts that Respondent called Complainant, stating that he believed Complainant would want to purchase a number of “priceline” formative domain names Respondent had registered. This also indicates bad faith under this prong of the Policy. Cf. S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”). Accordingly, under the weight of the evidence, the Panel finds that Respondent clearly intended to profit in bad faith under Policy ¶ 4(b)(i).
Further, Complainant asserts that the offer of travel bags on the website using Complainant’s PRICELINE mark disrupts the business of Complainant, and Respondent is intentionally causing confusion for commercial gain under both Policy ¶¶ 4(b)(iii) and (iv). Disruption has been defined as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.” Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000). Further, where a respondent profits from demonstrated confusion associated with a domain name, Policy ¶ 4(b)(iv) may be present. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, the Panel finds that Respondent’s sale of travel bags disrupts Complainant’s business by means of either competition or simply acting in opposition to Complainant’s offerings, and that the likely confusion and commercial profit that results from this use imputes both Policy ¶¶ 4(b)(iii) and (iv).
Lastly, Complainant argues that Respondent had actual or constructive knowledge of the PRICELINE mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii). Complainant argues that, given the fame of the PRICELINE mark, Respondent’s use of the mark in an identical domain name, and the inclusion of travel bag sales on the website, Respondent must have had actual knowledge. Complaint registered its mark with the USPTO in 1999. Respondent created the domain name 17 years later on August 31, 2016. Respondent is based in the U.S. The Panel finds that Respondent at least had constructive, if not actual notice of Complainant’s mark before creating its domain name.
The Panel finds that Respondent has engaged in bad faith registration and use 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 <priceline.viajes> domain name be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist
Dated: March 31, 2017
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