Seven Seas Cruises S. de R.L. v. Mikael Petterson
Claim Number: FA2007001904822
Complainant is Seven Seas Cruises S. de R.L. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Mikael Petterson (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sevenseasresidences.com>, registered with DreamHost, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2020; the Forum received payment on July 17, 2020.
On July 20, 2020, DreamHost, LLC confirmed by e-mail to the Forum that the <sevenseasresidences.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 July 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2020 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@sevenseasresidences.com. Also on July 28, 2020, 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 August 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant offers cruises and travel services throughout the world. Complainant has rights in the SEVEN SEAS mark through its registration with the United States Patent and Trademark Office (“USPTO”) of six different marks with the SEVEN SEAS phrase incorporated (e.g. SEVEN SEAS CRUISES Reg. No. 3,368,575, registered Jan. 15, 2008; SEVEN SEAS NAVIGATOR Reg. No. 2,571,631, registered May 21, 2002). The disputed domain name <sevenseasresidences.com> is confusingly similar to Complainant’s SEVEN SEAS marks as it incorporates the dominant portions of the mark, and replaces the last word with “residences” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by this domain name, and Complainant has not authorized or licensed Respondent to use it. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it engage in any legitimate noncommercial or fair uses with the mark. Instead, Respondent attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where it offers competing services. Respondent’s status as a former employee of Complainant’s parent company grants Respondent no further rights or legitimate interests in the disputed domain name.
iii) Respondent registered and uses the <sevenseasresidences.com> domain name in bad faith. Respondent attempted to sell the disputed domain name in bad faith to Complainant. Respondent attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where it sells competing services. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SEVEN SEAS mark. Finally, Respondent’s use of a WHOIS privacy service contributes to the other findings of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The disputed domain name was registered on August 22, 2019.
2. Complainant has established rights in the SEVEN SEAS mark through its registration with the USPTO of six different marks with the SEVEN SEAS phrase incorporated (e.g. SEVEN SEAS CRUISES Reg. 3,368,575, registered Jan. 15, 2008; SEVEN SEAS NAVIGATOR Reg. 2,571,631, registered May 21, 2002).
3. The resolving website of the disputed domain name features Complainant’s SEVEN SEAS mark alongside information for services competing with Complainant’s cruise business.
4. Respondent offered to sell the disputed domain name to Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the SEVEN SEAS mark through its registration with the USPTO of six different marks with the SEVEN SEAS phrase incorporated (e.g. SEVEN SEAS CRUISES Reg. 3,368,575, registered Jan. 15, 2008; SEVEN SEAS NAVIGATOR Reg. 2,571,631, registered May 21, 2002). See Compl. Annex 7. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has established rights in the SEVEN SEAS mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s family of SEVEN SEAS marks, as it incorporates a significant portion of the marks by using the words SEVEN SEAS, and replaces the last word with “Residences”, adds the “.com” gTLD, and eliminates spaces between words. Under Policy ¶ 4(a)(i), domain name may be confusingly similar to a mark if it only incorporates dominant portions of the mark and replaces other parts of the mark with another term, adds a gTLD to the end, and eliminates spaces between words in the mark. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Complainant argues the disputed domain name incorporates the dominant part of its marks, the words “SEVEN SEAS”, and simply replaces the last words of the marks with the generic term “residences”, adds the “.com” gTLD, and eliminates spaces between words. As the Panel agrees, it finds the disputed domain name is confusingly similar to Complainant’s marks 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its marks in its domain name. Per Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name, while a lack of evidence may indicate a respondent was not commonly known by a disputed domain name before registering it. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.); see also Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). The WHOIS of record identifies Respondent as “Mikael Petterson”, and no information in the record refutes Complainant’s claim that it never authorized Respondent to use Complainant’s mark in the disputed domain name. Complainant also argues there is no evidence demonstrating Respondent was commonly known by the name “Seven Seas Residences” before Respondent allegedly incorporated a company by that name on January 23, 2020, over twenty years after Complainant first began using the SEVEN SEAS NAVIGATOR mark in connection with its business. As the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Complainant argues Respondent attempts to divert Internet users seeking Complainant’s services for commercial gain by offering competing services on the disputed domain name’s resolving website. Under Policy ¶ 4(c)(i) and (iii), it is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use to divert internet users seeking a complainant’s website to a disputed domain’s resolving website, where competing services or goods are offered or sold. See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which displays Respondent’s alleged business marketing different tours on three different cruise ships throughout the world. Complainant argues that Respondent registered the disputed domain name to divert Internet users interested in Complainant’s cruises, only to offer them competing cruise services through its own alleged company on the disputed domain name’s resolving website. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Complainant also alleges that Respondent’s status as a former employee bestows no rights or legitimate interests in Complainant’s SEVEN SEAS marks. Under Policy 4(a)(i), former employees generally possess no rights to use a complainant’s mark. See Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017) (holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”). Complainant alleges that Respondent was an employee of Complainant’s parent company from 2013-2016. Complainant argues this status only bolsters its assertion that Respondent is attempting to divert Internet users to its own alleged competing cruise line service.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith, as evidenced by Respondent’s offer to sell the disputed domain name to Complainant. Where Respondent primarily intended to make an offer when it registered a disputed domain name, an offer to sell a disputed domain name may indicate bad faith registration and use under Policy ¶ 4(b)(i). Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides email correspondence between Complainant and Respondent, where Respondent alleges investing time and money into marketing its business under the SEVEN SEAS mark, and offers to sell the disputed domain name as a possible easy resolution. As the Panel finds Respondent intended to sell the disputed domain name when it registered the domain, it finds Respondent offered to sell the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues Respondent registered and uses the disputed domain name in bad faith by attempting to pass off as Complainant in order to offer competing services to Internet users seeking Complainant. Registering and using a domain name to pass off as a complainant, and offering competing services on the domain name’s resolving website are generally considered bad faith uses under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s SEVEN SEAS mark alongside information for services competing with Complainant’s cruise business. Complainant argues Respondent registered a confusingly similar domain name to attract Internet users seeking Complainant’s cruises to Respondent’s own alleged cruise business. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sevenseasresidences.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 31, 2020
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