Priceline.com, Inc. v. Direct Privacy / Direct Privacy LTD
Claim Number: FA1403001547216
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Direct Privacy / Direct Privacy LTD (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lriceline.com>, registered with DNC Holdings, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 6, 2014; the National Arbitration Forum received payment March 6, 2014.
On March 6, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <lriceline.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2014, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lriceline.com. Also on March 7, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent’ did not make allegations in this proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <lriceline.com> domain name April 19, 2006.
Complainant established that it has rights and legitimate interests in the mark contained in misspelled form within the disputed domain name.
Respondent has no such rights or legitimate interests.
The domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar
Complainant states that it uses the PRICELINE mark in connection with its travel services. Complainant registered the PRICELINE mark with the USPTO (e.g., Reg. No. 2,272,659, registered August 24, 1999). The Panel agrees that Complainant’s registration of the PRICELINE mark with the USPTO satisfies Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant next argues that Respondent’s <lriceline.com> domain name is confusingly similar to the PRICELINE mark. The Panel notes that Respondent replaced the letter “p” in the mark with the letter “l” and added the generic top-level domain (“gTLD”) “.com.” The Panel agrees that these minor alterations support a finding of confusing similarity under a Policy ¶ 4(a)(i) analysis. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <lriceline.com> domain name. Complainant contends that it has not given Respondent permission to otherwise use the PRICELINE mark in any form as a basis for domain names. The Panel notes that the WHOIS information lists “Direct Privacy LTD” as the disputed domain name’s registrant of record. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel determined that the respondent could not be known by the domain name when no evidence suggested such a finding. The Panel here finds that Respondent is not commonly known by the <lriceline.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next claims that Respondent is using the <lriceline.com> domain name to send Internet users to Complainant’s own website through an exploit of Complainant’s affiliate program. See Compl., at Attached Ex. H. Complainant believes that Respondent is getting affiliate referral incentives by its unauthorized use of this confusingly similar domain name. In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) the panel found that the respondent made no bona fide offering under Policy ¶ 4(c)(i), nor legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), when the domain name was intentionally used in violation of the parties’ affiliate program. The Panel here agrees that Respondent’s decision to send Internet users to Complainant’s own websites in an attempt to exploit an affiliate agreement is neither a bona fide offering of services nor a legitimately noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds that Complainant may establish bad faith under Policy ¶ 4(a)(iii) despite Complainant’s decision not to argue under the examples of bad faith provided in Policy ¶ 4(b) as those examples are merely illustrative. See, e.g., Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant alleges that Respondent is exploiting Complainant’s affiliate program in bad faith by using a confusingly similar domain name to send Internet users through to Complainant’s own domain name. The Panel notes that the disputed domain name, and its underlying coding, illustrate that Respondent uses the domain name as part of Complainant’s affiliate program. See Compl., at Attached Ex. H. The Panel agrees that Respondent’s willingness to exploit this affiliate agreement by registering confusingly similar domain names and receive affiliate fees from Complainant is evidence of Policy ¶ 4(a)(iii) bad faith. See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program).
Complainant argues that Respondent is engaged in typosquatting through the registration of the <lriceline.com> domain name. Complainant suggests that typosquatting is in itself evidence of bad faith. Typosquatting has been traditionally viewed as a minor or subtle alteration to a mark so as to merely add the necessary gTLD and a single character misspelling—the point being that the Internet user entering the domain name reasonably expects to be delivered to the desired website. See, e.g., Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). This Panel agrees that the <lriceline.com> domain name is an example of typosquatting and finds bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lriceline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Date: April 16, 2014.
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