PADI Americas, Inc. v. Admin Department
Claim Number: FA1802001770164
Complainant is PADI Americas, Inc. (“Complainant”), represented by Diane M. Reed of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Admin Department (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paditravel.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2018; the Forum received payment on February 1, 2018.
On February 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paditravel.com> 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 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 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@paditravel.com. Also on February 8, 2018, 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 5, 2018.
On March 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is the world’s leading scuba diver training organization. Complainant has offices in seven countries, including its headquarters in the United States, and has over 135,000 individual members, who have issued more than 25 million certifications around the world, and has over 6,400 retail and resort location members located in 183 countries and territories worldwide. Complainant has rights in the PADI mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,005,461, registered Feb. 25, 1975). See Compl. Annex D. Respondent’s <paditravel.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic and descriptive term “travel.”
Respondent has no rights or legitimate interests in the <paditravel.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has barely changed the resolving domain over the years, which solicits diving related services, and has sought to sell the domain name since as early as 2014. See Compl. Annexes J (<sedo.com> screenshot) and L (resolving domain from Way Back Machine).
Respondent registered and uses the <paditravel.com> domain name in bad faith. First, Respondent has offered to sell the domain name for $7,342.00, which greatly exceeds Respondent’s out-of-pocket expenses. See Compl. Annex J. Further, Respondent uses the domain name in a way that disrupts Complainant’s business and creates a likelihood of confusion with Complainant’s PADI marks to offer competing diving related goods or services. See Compl. Annex L. Finally, Respondent knew of Complainant’s goods and services bearing the PADI marks prior to registering and renewing the disputed domain name.
B. Respondent
Respondent made the following contentions.
Respondent has owned the domain name for eleven years, which is much longer than Complainant has had rights in the PADI TRAVEL mark.
Respondent does have rights and legitimate interests in the domain name at issue. The term PADI is a generic term used in specific sectors and has many meanings besides the scuba diving services offered by Complainant. See Resp. pg. 3. Further, Respondent acquired the domain name in 2006 with intentions to use it as a travel website associated with Indonesia, with the PADI mark standing for “Positively Authentic. Distinctly Indonesia.” Additionally, there is nothing against owning a domain name for the purpose of using it at a later date, and undeveloped websites do not indicate lack of rights in a domain name. Moreover, Respondent has received offers to purchase the domain name from a travel company in Indonesia that already uses the PADI term in its company, hence the reason the domain name is listed as for sale. Finally, Respondent uses the domain name in services related to travel, which are completely independent of Complainant’s use of the PADI mark in connection with its scuba diving related services.
Respondent did not register the domain name in bad faith. Respondent did not register the domain name with the intent to sell it, and has only occasionally listed it for sale when third-parties have solicited Respondent to purchase the domain name. Respondent has never approached Complainant advertising the domain name as for sale. Further, Respondent uses the domain name in services unrelated to Complainant’s scuba diving business. Additionally, the domain name predates Respondent’s first use of the PADI TRAVEL mark by at least two years.
1. Complainant is a United States company engaged in the scuba diver training and related industries.
2. Complainant has established its rights in the PADI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,005,461, registered Feb. 25, 1975).
3. Respondent registered the <paditravel.com> domain name on February 26, 2004.
4. Respondent has caused the domain name to resolve to its website which has been used to promote its activities in the provision of travel and related services.
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.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the PADI mark based on its registration with the USPTO (e.g. Reg. No. 1,005,461, registered Feb. 25, 1975). See Compl. Annex D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the PADI mark.
Although not pivotal to this decision, the Panel also notes that Complainant’s evidence shows that it also has many other registered trademarks for PADI, that they, like the PADI trademark referred to above, were registered many years before the disputed domain name was registered and that they are registered in many countries around the world, including Australia and Indonesia, with both of which Respondent claims some association.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PADI mark. Complainant argues that Respondent’s <paditravel.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic and descriptive term “travel” to the PADI mark. The Panel also notes that the domain name adds the generic top-level domain (“gTLD”) “.com.” Neither of those features distinguish a domain name from a mark for the purposes of Policy ¶ 4 (a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The reason why this is so is that an objective bystander looking at the domain name and the trademark would naturally assume that the domain name may well be related to travel services offered by Complainant when it was offering its scuba diving training services under the trademark, name and brand PADI, i.e., travel offered to customers as part of their scuba diving training package. In other words, it would be perfectly natural for anyone acquainted with the scuba diving offerings of Complainant to assume that any reference to travel in the context of PADI, meant travel to sites where the scuba diving training would take place. See also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <paditravel.com> domain name is confusingly similar to the PADI mark under Policy ¶ 4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PADI mark and to use it in its domain name, adding only the word ‘travel”, which encourages internet users to assume that the domain name relates to travel offered by Complainant to customers as part of its scuba diving training services;
(b) Respondent registered the <paditravel.com> domain name on February 26, 2004;
(c) Respondent has caused the domain name to resolve to its website which has been used to promote its activities in the provision of travel and related services;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <paditravel.com> domain name as Respondent is not commonly known by the domain name. Where a response is lacking, relevant information to answer that question includes the WHOIS record 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 in the present case identifies “Admin Department” as the registrant. See Compl. Annex A. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the PADI mark. Panels may use such evidence to show an absence of rights or legitimate interests in the domain name. 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 submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <paditravel.com> domain name under Policy ¶ 4(c)(ii).
These matters show that Complainant has made out a prima facie case. The Panel must therefore decide if Respondent has rebutted that prima facie case against it.
Respondent’s argument to rebut the prima facie case are essentially as follows.
(a) Respondent argues, first, that the term PADI is a generic term used in specific sectors and has many meanings besides the scuba diving services offered by Complainant.
Respondent may well be correct that the word PADI has some generic meanings, although for present purposes the questions is not whether PADI is a generic expression, but whether the expression “paditravel” has a generic meaning. It is very clear that the expression “paditravel” is not being used in any of the generic senses cited by Respondent, but in the sense of a type of travel service, one linked to the services offered by Complainant in training in scuba diving. The panel’s view is that the section of the public likely to come across it on the internet is more likely to take it to mean travel services offered together with the well known scuba diving training services that have been offered around the world by Complainant under the name PADI.
In that regard, it should also be noted that, although neither Complainant nor Respondent has made submissions on it, Respondent‘s website has a purported disclaimer on it which reads:
“Please note we are not associated with the Professional Association of Diving Instructors.”
The disclaimer may well be correct, but it also shows that Respondent was very much aware of the existence of the Association whose initials were taken to make the word PADI, as the disclaimer uses the full name of the association. The Panel therefore concludes that Respondent knew of the PADI name and brand when it registered the domain name and was deliberately invoking the PADI brand when it chose the domain name, even if it then purported to dissociate itself from it. The Panel also concludes that it is more likely than not, having invoked the name of the association, that Respondent wanted to give the impression that the travel services operated under the domain name were in some way or another connected with Complainant and its PADI mark or were similar to those services.
‘ Plea
The disclaimer may be correct b
(b) Respondent then argues that it acquired the domain name in with the intention to use it as a travel website associated with Indonesia, with the PADI mark standing for “Positively Authentic. Distinctly Indonesia.” Respondent uses this as one of its reasons to show it was not seeking to trade on Complainant’s name when it formulated the domain name, because it had in mind, not the Professional Association of Diving Instructors, but “Positively Authentic. Distinctly Indonesia.” The Panel does not accept that submission, as Respondent in effect states, twice, on its website , even highlighting the relevant letters to create the word PADI, that PADI comes from the words “Personalized Adventure and Distinctly Individual “ (emphasis added”), not Indonesia. The Panel therefore does not accept that the use of the letters making up Complainant’s trademark has been used to show a uniquely Indonesian travel service; rather, it shows that Respondent was minded to invoke the letters of Complainant’s trademark and to trade on them in its own way by offering travel services under the guise of Complainant’s scuba diving services.
(c) Respondent then argues that there is nothing against owning a domain name for the purpose of using it at a later date, and undeveloped websites do not indicate lack of rights in a domain name. Moreover, Respondent states that it has received offers to purchase the domain name from a travel company in Indonesia that already uses the PADI term in its company, hence the reason the domain name is listed as for sale.
Despite this argument, the obligation on the Panel is to assess if Respondent has a right or legitimate interest in the domain name. The Panel’s assessment of the whole of the evidence is that the dominant intention of the Respondent was to create the impression that it services as a travel service were being offered as part of or under the guise of Complainant’s services in providing scuba diving training.
(d) Finally, Respondent submits that it uses the domain name in services related to travel, which are completely independent of Complainant’s use of the PADI mark in connection with its scuba diving related services.
The Panel does not accept this argument. Clearly, Respondent is offering a travel service, but the internet user could easily assume that the travel was associated with PADI scuba training and there are several allusions in the domain name and on the website that give rise to that suggestion. The fact that travel is joined with the PADI mark at all in the domain name suggests that the travel being suggested is in conjunction with the well known scuba training available under the PADI mark. The photographs on the site are of vessels that could easily be assumed to be part of a scuba diving package. Statements on the site to “dive into our travel website”, and references to “the depths of the Great Barrier Reef”, “ the waters off Hawaii”, “a world of adventure out there just waiting for you to dive into”, “the depths of what’s out there ]” and “all that hectic diving” are such that it would not be surprising if internet users thought they were references to scuba diving and, in all probability, to training in that activity in conjunction with the well known scuba diving training offered by Complainant under the PADI mark.
The Panel is obliged to conclude that none of the matters raised by Respondent show that it has a right or legitimate interest in the domain name. Indeed the evidence as a whole suggests that Respondent registered the domain name, knowing what the PADI mark stood for and suggesting that the travel services it offered were part of or could be taken in conjunction with the more famous scuba diving training offered under the PADI mark.
Respondent has therefore not rebutted the prima facie case against it.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <paditravel.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). It is clear, in the opinion of the Panel, that Respondent has been using Complainant’s PADI trademark, that it knew this was Complainant’s mark, that it was used for scuba diving training business, on occasions in conjunction with travel and that Respondent used the mark in its domain name to suggest that it could also offer services of the same nature. This had the potential to disrupt Complainant’s business and to create confusion as to whether the services being offered under the domain name were Complainant’s own services or not. As such, the Panel finds that Respondent disrupted Complainant’s business and attempted to benefit commercially from Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the PADI mark at the time of registering the <paditravel.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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). In that regard the Panel agrees that Respondent had actual knowledge of Complainant’s mark, as it acknowledged in its purported disclaimer on the website that there was a body whose initials made up the PADI mark, raising the probability that Respondent had the PADI mark in mind when it registered the domain name and was seeking to invoke it and then trade off it.
Thirdly, Complainant also claims that Respondent offers the <paditravel.com> domain name for sale for a price in excess of its out-of-pocket expenses. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As mentioned previously, the <sedo.com> webpage associated with the infringing domain name indicates that Respondent has offered to sell the domain name for $7,342.00. See Compl. Annex J. It is acknowledged that Respondent was not trying to sell the domain name specifically to Complainant or a competitor, but it is equally clear that one of the motives that Respondent had in buying and retaining the domain name was to try to sell it, as it included a well known trademark and that this must be taken into account to obtain a complete understanding of Respondent’s intentions. Accordingly, offering the domain name for sale to the general public is, together with other indicia, evidence of bad faith under Policy ¶ 4(b)(i).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PADI mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paditravel.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 13, 2018
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