Best Fares USA, Inc. v. Dan Wedin c/o Georgetown Inc.
Claim Number: FA0606000736609
Complainant is Best Fares USA, Inc. (“Complainant”), represented by Deborah L. Lively, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201, USA. Respondent is Dan Wedin c/o Georgetown Inc. (“Respondent”), 9123 SE St. Helens Street, Ste 100, Clackamas, OR 97015.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com>, registered with Names4Ever.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2006.
On June 26, 2006, Names4Ever confirmed by e-mail to the National Arbitration Forum that the <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names are registered with Names4Ever and that Respondent is the current registrant of the names. Names4Ever has verified that Respondent is bound by the Names4Ever 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 June 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 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@bestfarestomexico.com, postmaster@bestfarestotahiti.com, and postmaster@bestfarestocaymans.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 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.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names are confusingly similar to Complainant’s BESTFARES.COM mark.
2. Respondent does not have any rights or legitimate interests in the <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names.
3. Respondent registered and used the <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Best Fares USA, Inc., is a leading purveyor of travel-related services, specializing in the arranging of group discounts on airfares, cruises, accommodations, transportation, and entertainment as well as providing other related services. Since its inception in 1983, Complainant has registered numerous marks in connection with the provision of these services including the BESTFARES.COM mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,462,154 issued June 19, 2001).
Respondent registered the <bestfarestotahiti.com> domain name on November 17, 2004 and both of the <bestfarestomexico.com>, <bestfarestocaymans.com> domain names on November 19, 2004. Each of Complainant’s disputed domain names resolves to Respondent’s <flyawaytravel.com> domain name and website which offers competing travel-related services.
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 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 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 rights in the BESTFARES.COM mark
through registration with the USPTO. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant contends that each of Respondent’s <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain names feature Complainant’s entire BESTFARES.COM mark and add a common geographic term along with the generic term “to.” The Panel finds that the addition of a geographic term such as Mexico, Tahiti, or Caymans along with the generic term “to” fails to sufficiently distinguish Respondent’s domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no 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”).
Complainant asserts that Respondent’s disputed domain names
connect Internet users to Respondent’s <flyawaytravel.com> domain name
and website. At this site, Respondent
offers travel-related services to Internet users in direct competition with
Complainant. The Panel finds that
Respondent has not used the <bestfarestomexico.com>, <bestfarestotahiti.com>
and <bestfarestocaymans.com> domain names in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, 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 the 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 that competed with
those offered by the complainant under its marks).
Respondent has failed to present evidence showing that it
was commonly known by any of the <bestfarestomexico.com>, <bestfarestotahiti.com>
and <bestfarestocaymans.com> domain names prior to the filing of
this dispute or that Respondent is licensed by Complainant to register domain
names featuring Complainant’s BESTFARES.COM mark. As a result, the Panel finds that Respondent does not have rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); 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).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the confusingly similar <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names for the purposes of connecting Internet users to Respondent’s competing website for its own commercial gain. The Panel finds that Respondent’s use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Finally, Complainant contends that Respondent’s use of the disputed domain names will likely result in Internet user confusion as to Complainant’s sponsorship of or affiliation with the resulting website, particularly because Respondent is a competitor of Complainant. The Panel finds that Respondent is using this confusion for its own commercial gain and is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
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 <bestfarestomexico.com>, <bestfarestotahiti.com> and <bestfarestocaymans.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 8, 2006
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