Grand Circle LLC v. Amsterdam Investments Limited
Claim Number: FA0101000096574
The Complainant is Grand Circle LLC, Boston, MA, USA ("Complainant") represented by Brian C. Olson, of Legal Department. The Respondent is Amsterdam Investments Limited, Grand Turk, TC ("Respondent") represented by Christopher Warrington.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "grandcircletravel.com" and "grandcirclecruiseline.com", registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 29, 2001; the Forum received a hard copy of the Complaint on February 1, 2001.
On February 5, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "grandcircletravel.com" and "grandcirclecruiseline.com" are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on February 26, 2001.
On March 12, 2001, pursuant to Complainantís request to have the dispute decided by a One Member Panel, the Forum appointed Hon. James A. Carmody as Panelist.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
Complainant claims common law trademark rights to the name "GRAND CIRCLE TRAVEL" with first claimed use in 1958. In July of 2000, Complainant filed to register such trademark with the U.S. Patent and Trademark Office. The domain names at issue, grandcircletravel.com and grandcirclecruiselines.com are identical or confusingly similar to Complainantís trademark, says Complainant. Further, Claimant alleges that Respondent has no legitimate interests in respect of these domain names and that they were registered and are being used in bad faith.
Respondent does not deny that the domain names at issue are identical or confusingly similar to Complainantís trademark, but alleges that the domains were registered in support of a European company named Grand Circle. Further, respondent admits that it is not now using nor does it have an intention to use the domains names at issue and says that it would have been willing to transfer the domains to Complainant if asked.
Grand Circle LLC operates an international travel and tourism business through an operating division named "Grand Circle Travel", specializing in selling package tours to American travelers over the age of fifty. Grand Circle Travel began operations in 1958, and had more than 120,000 travelers, from every state in the country, in the year 2000. The name is widely recognized across the United States as an industry leader in tours marketed at elder Americans. A substantial percentage of Grand Circle Travelís business consists of river cruises in Europe, Egypt and China, and a growing percentage consists of ocean cruises. Grand Circle LLC has filed an application to register as a federal trademark "Grand Circle Travel", which is pending as number 76-097089; the application lists 1958 as the date of first use. In addition, Grand Circle LLC has common-law trademark rights to the name "Grand Circle Travel".
This Panelist finds that grandcircletravel.com, is identical to the complainantís common law trademark, "Grand Circle Travel," and grandcirclecruiseline.com, is confusingly similar to the trademark, in that it implies an association with the river and ocean cruise segment of Complainantís business. Customers and potential customers who are most familiar with Grand Circle Travelís river and ocean cruise offerings would almost certainly be misled into thinking that the domain name grandcirclecruiseline.com was affiliated with the travel company Grand Circle Travel. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainantís pending service mark application); SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, D2000 - 0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).
The Respondent, Amsterdam Investments Limited, has no rights or legitimate interests in the domain names at issue and admits as such in its Response. Respondent is not conducting business using either of these domain names and is not making any legitimate non-commercial or fair use of these domain names. Both domains link to blank pages with "under construction" labels. Respondent has not made use of nor shown demonstrable preparations to use the domain names in connection with a bona fide offering of goods and services or for a noncommercial use. Policy ∂ 4(c)(i), (iii). Respondent is not commonly known by the domain names. Policy ∂ 4(c)(ii). See Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).
See also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondentís willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name); Marcor International v. Langevin, FA 96317 (Nat. Arb. Forum Jan 12, 2001) (Respondentís willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question).
Passive holding of a domain name is evidence of bad faith registration and use. See DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondentís passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy)
See also Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that the "Respondentís consent to transfer the domain name, in addition to the failure to develop the site, lead the panel to conclude that the domain name was registered and used in bad faith"); Desotec NV v. Jacobi Carbons AB, D2000-1398 (WIPO Dec 21, 2000) (transferring the domain name where Respondent consented to the transfer in correspondence with the Complainant).
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.
Identical and/or Confusingly Similar
This Panelist finds that the domain names at issue are identical or confusingly similar to Complainantís common law trademark.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests in respect of the domain names at issue.
Registration and Use in Bad Faith
Respondent has registered and used the domain names at issue in bad faith.
It is the Decision of this Panelist that the domain names, grandcircletravel.com and grandcirclecruiselines.com be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: March 15, 2001
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