Carlson Travel Group, Inc. v. Maureen
Shank
Claim Number: FA0509000559916
PARTIES
Complainant
is Carlson Travel Group, Inc. (“Complainant”)
represented by Wanda K. Cahill, 701 Carlson Parkway, MS 8249,
Minnetonka, MN 55305. Respondent is Maureen Shank (“Respondent”), 19
Crawford Drive, Dix Hills, NY 11746.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cruisespecialists.com>,
registered with Bulkregister, Llc.
PANEL
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 14, 2005.
On
September 15, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the <cruisespecialists.com>
domain name is registered with Bulkregister, Llc. and that the Respondent is
the current registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc.
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
September 15, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 5, 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@cruisespecialists.com by e-mail.
A
timely Response was received and determined to be complete on October 4, 2005.
On October 7, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name <cruisespecialists.com> is identical to
Complainant’s registered service mark.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and is using the disputed domain name in bad faith.
B.
Respondent
Respondent
does not dispute that the domain name at issue is identical to Complainant’s
registered service mark.
Respondent
alleges that she has rights or legitimate interests in respect of the disputed
domain name.
Respondent
denies that she registered and is using the disputed domain name in bad faith.
FINDINGS
Complainant’s
service mark on which the Complaint is based is CRUISE SPECIALISTS with an associated design which has
been used in commerce since at least 1988.
This mark is used for travel agency and vacation planning services,
namely cruise vacation planning. Complainant says that this mark is associated
solely and exclusively with Complainant, a subsidiary of Carlson Companies,
Inc. Complainant is an internationally
renowned travel services company. The
Complainant maintains a significant Internet presence and has invested
significant resources to establish and maintain said presence.
Complainant
is the owner of the June 5, 1990 federal Registration No. 1599938 for the mark
Cruise Specialists with design for the above-described service.
Respondent
does not seriously contest Complainant on element one of the Policy but points
out that the domain name at issue was originally registered by a Bette Dest,
doing business as Cruise Specialists, Inc. of Connecticut, in 1997. Later, apparently in 2003 and 2004, the
domain name was up for public sale, and Respondent purchased the name in August
of 2004. Subsequently, Respondent, who
is in the tour business, spent additional monies to develop a web site
associated with the domain name at issue, although not all pages are
finished. Respondent does business as
Cruise Specialists of Long Island Ltd.
Contrary
to the allegations of the Complaint, Respondent has not held the domain name at
issue for eight years, although it is puzzling that Complainant has waited
eight years before bringing this action against a registered owner of <cruisespecialists.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 rights in the CRUISE SPECIALISTS mark by registering it with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,599,938
issued June 5, 1990). 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 <cruisespecialists.com> domain name is
identical to Complainant’s CRUISE SPECIALISTS
mark because the domain name incorporates Complainant’s mark in its entirety with the only differences
being the omission of the space between the words “cruise” and “specialists” and the addition of the generic
top-level domain “.com.” These minor alterations to
Complainant’s registered mark are necessary for domain name registration and, therefore,
insufficient to negate 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 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
<gaygames.com> domain name 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).
As a practical matter, the
Respondent does not argue that the domain name at issue is not identical to Complainant’s mark.
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
It
appears that Respondent purchased the domain name at issue from the original
registrant on the open market in 2004—something that could have been done by
the Complainant. It further appears
that Respondent does business as Cruise Specialists of Long Island Ltd.
Respondent’s
purchase of the previously registered <cruisespecialists.com>
domain name in 2004 was
part of a business plan to market Respondent’s business as Cruise Specialists of Long Island Ltd. This
evidences Respondent's
preparations to use the disputed
domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent
had rights or legitimate interests in the domain name where he began demonstrable preparations to use the
domain name in connection with
a bona fide offering of goods
or services).
Accordingly, the Panel finds that
Policy ¶ 4(a)(ii) has NOT been satisfied.
Respondent has rights or legitimate
interests in the <cruisespecialists.com> domain name pursuant to Policy ¶ 4(a)(ii),
and there is no evidence that Respondent registered or used the disputed domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Schering AG
v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that a
respondent did not register or
use the domain name <metagen.com> in bad faith where the
respondent registered the domain
name in connection with a fair business interest and no likelihood of confusion was created); see also DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000)
(finding a respondent has shown that it has a legitimate
interest in the domain name because the respondent selected the name in good faith for its website, and was
offering services under the domain name prior to the initiation of the dispute).
Accordingly, the Panel finds that
Policy ¶ 4(a)(iii) has NOT been satisfied.
DECISION
Having
not established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: October 19, 2005
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