Asset Data Corporation v. Wesley Perkins
Claim Number: FA0602000639202
PARTIES
Complainant is Asset Data Corporation (“Complainant”), represented by Arlana S. Cohen, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Wesley Perkins (“Respondent”), 7 Wayside Marston Green, Bermingham, West Midlands B37 7AY, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheaphotel.net>,
registered with Go Daddy Software, Inc.
PANEL
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 6, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 7, 2006.
On February 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <cheaphotel.net>
domain name is registered with Go Daddy Software, Inc. and that the 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 February 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 6, 2006 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@cheaphotel.net by e-mail.
A timely Response was received and determined to be complete on February
23, 2006.
Complainant filed an Additional Submission dated February 23,
2006. Respondant filed an Additional
Submission which was received by the Forum on February 27, 2006. These submissions were timely filed.
On March 1, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name at issue is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; that Respondent should be
considered as having no rights or legitimate interests in respect to the domain
name at issue; and that the domain name
was registered and is being used in bad faith.
B. Respondent
The Respondent contends that Complainant’s trademark is not
internationally recognized; that the
domain name at issue contains a generic term; that the domain name at issue was
registered prior to the trademark application; and the the Complainant engaged
in reverse domain hijacking.
C. Additional Submissions
Through
its additional submission, Complainant contends that it has established rights
in the its mark through registration with the USPTO, and also through
continuous use of the mark since 1997, five years before the Respondent
registered the domain name at issue.
Through
its additional submission, Respondent contends he did not register the domain
name at issue in bad faith; and states that the complainant has failed to prove
rights and legitimate interests and registration and use in Bad Faith.
FINDINGS
The Complainant is engaged in the business of
providing internet travel services.
Complainant registered the domain name <cheaphotel.com> in 1997 and began operating its discount travel
service business.
In May 2005, Complainant obtained a United
States registration for the mark <cheaphotel.com> for “travel agency services, namely, making
reservations and booking for temporary lodging.”
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 used the CHEAPHOTEL.COM mark
continuously since 1997; therefore,
Complainant has established common law rights in the mark through continuous
and ongoing use. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”).
The domain name at issue retains the dominant
features of Complainant’s CHEAPHOTEL.COM mark and substitutes the generic top
level domain (“gTLD”) “.net” with the
gTLD “.com.” The gTLD is irrelevant in
determining whether a domain name is identical or confusingly similar to a mark
for purposes of Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
.").
The domain name at issue resolves to a
website featuring links to various competing and non-competing commercial
websites with the header “Your one stop Hotel and Motel resource.” This would not be considered a bona fide
offering of goods or services or a legitimate noncommercial or fair use of the
domain name at issue. See Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
Furthermore, Respondent has not provided any
evidence that it is commonly known by the <cheaphotel.net> domain
name, or that it is licensed to register domain names featuring Complainant’s
mark. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369
(Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to
support the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
From the evidence
presented, it appears that Respondent is using the domain name at issue for its
own commercial gain, as it is operating a website featuring links to competing
commercial websites from which Respondent presumably receives referral fees or
“click through” fees, which supports a finding of bad faith registration and
use. See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also
Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Also, Internet
users may become confused as to Complainant’s sponsorship of or affiliation
with the Respondent’s website. See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheaphotel.net>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 14, 2006
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