Online Vacation Center, Inc. v.
InvestorsNET
Claim
Number: FA0505000482728
Complainant is Online Vacation Center, Inc. (“Complainant”),
represented by Sarah T. Weitz, of Tripp Scott, P.A.,
110 S.E. 6th Street, 15th Floor, Fort Lauderdale, FL 33301. Respondent is InvestorsNET (“Respondent”), 25-14 38 St., Astoria, NY 11103.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <renaissancecruises.com>, registered with Go
Daddy Software, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 25, 2005.
On
May 23, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <renaissancecruises.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
May 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@renaissancecruises.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 makes the following assertions:
1. Respondent’s <renaissancecruises.com>
domain name is identical to Complainant’s RENAISSANCE CRUISES mark.
2. Respondent does not have any rights or
legitimate interests in the <renaissancecruises.com> domain name.
3. Respondent registered and used the <renaissancecruises.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Online Vacation Center, Inc., is
a provider of travel services, including cruise ship bookings over the
Internet. Complainant holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the RENAISSANCE CRUISES mark (Reg. No. 1,593,457 issued April 24, 1990).
Respondent
registered the <renaissancecruises.com> domain name on December 8,
1997. Respondent’s domain name
redirects Internet users to its commercial website featuring travel products
and cruise packages in direct competition with Complainant’s travel business.
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."
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 in the Complaint as true. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) finding that,
in the absence of a response, the panel is free to make inferences from the
very failure to respond and assign greater weight to certain circumstances than
it might otherwise do; see also 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.
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 has
established in this proceeding that it holds rights in the RENAISSANCE CRUISES
mark through registration with the USPTO.
See Am. Online,
Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The Panel finds that Respondent’s <renaissancecruises.com> domain name is identical to
Complainant’s RENAISSANCE CRUISES mark because the domain name contains
Complainant’s mark in its entirety, omits the space between ‘renaissance” and
“cruises,” and adds the generic top-level domain “.com” to the mark. The omission of a space and the addition of
a generic top-level domain to a registered mark do not counteract the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Shirmax Retail Ltd. v.
CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to
interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in
holding that “mere identicality of a domain name with a registered trademark is
sufficient to meet the first element [of the Policy], even if there is no
likelihood of confusion whatsoever”); see also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25,
2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark); see also Hannover Ruckversicherungs-AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that the <bodybyvictoria.com> domain name is identical to
the complainant’s BODY BY VICTORIA mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <renaissancecruises.com>
domain name. When Complainant makes a prima
facie case in support of its assertions, the burden shifts to Respondent to
show that it does have rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the <renaissancecruises.com> domain
name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where the complainant has asserted that the
respondent does not have rights or legitimate interests with respect to the
domain name it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
does not have rights or legitimate interests is sufficient to shift the burden
of proof to the respondent to demonstrate that such rights or legitimate
interests do exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights or legitimate interests in the domain name).
Respondent is
using the <renaissancecruises.com> domain name to redirect
Internet users to its commercial website featuring travel products and cruise
packages in direct competition with Complainant’s travel business. The Panel finds that Respondent’s use of a
domain name that is identical to Complainant’s RENAISSANCE CRUISES mark to
divert Internet users interested in Complainant’s products and services to its
commercial website featuring products and services in direct competition with
Complainant’s travel business is not in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s
appropriation of the complainant’s mark to market products that compete with
the complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a
competitor of the complainant, had no rights or legitimate interests in a
domain name that utilized the complainant’s mark for its competing website); see
also N. Coast Med., Inc. v. Allegro
Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or
legitimate interests in a domain name that diverted Internet users to the
respondent’s competing website through the use of the complainant’s mark).
Respondent has
not offered any evidence, and there is no proof in the record to suggest, that
Respondent is commonly known by the <renaissancecruises.com>
domain name. Moreover, Complainant has
not authorized or licensed Respondent to use its RENAISSANCE CRUISES mark. Thus, Respondent has not established that it
has rights or legitimate interests in the <renaissancecruises.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain that incorporates Complainant’s RENAISSANCE
CRUISES mark in its entirety for Respondent’s commerical gain. Respondent registered and used the <renaissancecruises.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential customers from Complainant to
Respondent’s website by taking advantage of Internet users who are searching
under Complainant’s RENAISSANCE CRUISES mark and diverting them to Respondent’s
commercial website featuring products and services in direct competition with
Complainant’s business. See Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain); see
also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
goods illustrates the respondent’s bad faith registration and use of the domain
name pursuant to Policy 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22,
2000) (finding bad faith where the respondent attempted to attract customers to
its website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as the complainant).
Moreover,
Respondent registered the <renaissancecruises.com> domain name
with constructive knowledge of Complainant’s rights in the RENAISSANCE CRUISES
mark due to Complainant’s registration of the mark with the USPTO. Registration of a domain name that is
identical to a mark, despite actual or constructive knowledge of another’s
rights in the mark, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking
to register or use the mark or any confusingly similar variation thereof.”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <renaissancecruises.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 28, 2005
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