Best Fares USA, Inc. v. Express Corporation
and Domain
Claim Number: FA0603000662198
PARTIES
Complainant is Best Fares USA, Inc. (“Complainant”), represented by Deborah L. Lively, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas,
TX 75201. Respondent is Express Corporation and Domain (“Respondent”),
Copthall, P.O. Box 2331, Roseau, Dominica 00152, DM.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestfares.us>,
registered with Moniker Online Services, Llc.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on March
20, 2006.
On Mar 17, 2006, Moniker Online Services, Llc confirmed by e-mail to
the National Arbitration Forum that the <bestfares.us> domain
name is registered with Moniker
Online Services, Llc and that Respondent is the current registrant of the
name. Moniker Online Services, Llc has
verified that Respondent is bound by the Moniker Online Services, Llc
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On March 24, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 13, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the National
Arbitration Forum transmitted to the
parties a Notification of Respondent Default.
On April 20, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name(s) be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of numerous proprietary marks used in connection with travel agency and travel-related services.
Complainant has used the BEST FARES mark continuously in connection with its business since 1983.
Complainant registered the BEST FARES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,007,739 issued October 15, 1996).
Additionally, Complainant registered the <bestfares.com> domain name on February 27, 1996, and operates a website at that domain name in connection with its business.
Respondent registered the <bestfares.us> domain name on June 11, 2004.
Internet users who access that domain name are directed to a generic search-engine website offering links to other travel-related websites in competition with Complainant.
Respondent’s <bestfares.us> domain name is confusingly similar to Complainant’s BEST FARES mark.
Respondent does not have any rights
or legitimate interests in the <bestfares.us> domain name.
Respondent registered and used the <bestfares.us>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. the domain name registered
by Respondent is substantively identical to a
trademark and 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 was
registered and is being used by Respondent in bad faith.
DISCUSSION
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 the 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 and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See 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); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000): “In the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint.”
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; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In light of the similarity between the Uniform Domain Name Dispute
Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP
precedent in rendering its decision in this proceeding.
Complainant alleges that Respondent does not have rights or legitimate interests in the <bestfares.us> domain name. Complainant has the initial burden of showing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a disputed domain name, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
There is no evidence
in the record of this proceeding to show that Respondent is the owner or
beneficiary of a trademark or service mark identical to the <bestfares.us>
domain name pursuant to Policy ¶ 4(c)(i).
Moreover, it is undisputed that Respondent is using the <bestfares.us>
domain name, which is identical to Complainant’s BEST FARES mark, to divert
consumers to a website featuring links to web sites operated by or for
Complainant’s direct competitors. Such
use of the disputed domain name for commercial gain does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iv). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a
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); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum
Dec. 5, 2003) (finding that a respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services competing with those offered by a complainant under its
marks).
Complainant
asserts, and Respondent does not deny, that Respondent is not commonly known by
the <bestfares.us> domain name.
There is likewise no information in the WHOIS database implying that
Respondent is commonly known by the <bestfares.us> domain
name. Complainant also asserts, and
Respondent does not deny, that Respondent is not affiliated with Complainant
and is not authorized to use Complainant’s marks. Therefore, Respondent has not established rights or legitimate
interests in the <bestfares.us> domain name pursuant to Policy ¶
4(c)(iii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that a respondent does not have rights in a domain name when
the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is uncontested that Respondent is using the <bestfares.us> domain name, which is identical to Complainant’s BEST FARES mark, to operate a website containing links to web sites of Complainant’s direct competitors. The Panel is therefore entitled to and does infer that Respondent receives click-through fees for misleading consumers to these websites. Respondent is therefore taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark to capitalize on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used a domain name confusingly similar to a complainant’s mark to attract users to a website sponsored by the respondent); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a 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 a complainant is the source of or is sponsoring the services offered at the site).
In addition, Respondent’s domain name incorporates
Complainant’s mark in its entirety, and Respondent’s website contains links to
websites offering services in direct competition with those of
Complainant. Respondent’s use of
Complainant’s mark to divert Internet users to Complainant’s competitors
amounts to disruption of Complainant’s business under Policy ¶
4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the
domain name <eebay.com> in bad faith where the respondent used the domain
name to promote competing auction sites).
Finally under this heading, it is
evident that Respondent registered the contested domain name with either actual
or constructive knowledge of Complainant’s rights in the BEST FARES mark by
virtue of Complainant’s prior registration of that mark with the pertinent
national authorities. Registration of a
confusingly similar domain name despite such actual or constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is
Ordered that the <bestfares.us> domain name be TRANSFERRED
forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 4, 2006
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