Orbitz Worldwide, LLC v. 21562719 Ont Ltd
Claim Number: FA1405001561211
Complainant is Orbitz Worldwide, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwworbitz.com>, registered with FABULOUS.COM PTY LTD.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2014; the National Arbitration Forum received payment on May 23, 2014.
On May 27, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <wwwworbitz.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 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@wwwworbitz.com. Also on May 28, 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 June 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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.
A. Complainant
1. Respondent’s <wwwworbitz.com> domain name is confusingly similar to Complainant’s ORBITZ mark.
2. Respondent does not have any rights or legitimate interests in the <wwwworbitz.com> domain name.
3. Respondent registered and uses the <wwwworbitz.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <wwwworbitz.com> domain name August 4, 2004, and uses it to divert Internet users to a website with hyperlinks to various third-party websites, some of which compete directly with Complainant’s business.
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 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.
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.”).
The Panel that Complainant’s USPTO registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the ORBITZ mark, regardless of whether Respondent dwells in Canada or elsewhere in the world. See, e.g., 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 also claims that the <wwwworbitz.com> domain name is confusingly similar to the ORBITZ mark, noting that there is no distinctiveness in the gTLD “.com,” and the addition of the prefix www. The Panel agrees, noting that Respondent’s addition of the prefix “www” plus a fourth “w” is not enough to differentiate the disputed domain name from the ORBITZ mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also AARP v. live love, FA 248740 (Nat. Arb. Forum May 11, 2004) (finding respondent’s <wwwwaarp.com> confusingly similar to the AARP mark). The Panel finds that the <wwwworbitz.com> domain name is confusingly similar to the ORBITZ mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have 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 claims that Respondent is not commonly known by the <wwwworbitz.com> domain name, nor has Complainant licensed or otherwise authorized Respondent’s use of the ORBITZ mark in domain names. In the WHOIS information, the registrant for the disputed domain name is listed as “21562719 Ont Ltd.” Thus, the Panel finds that Respondent is not commonly known by the <wwwworbitz.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also argues that Respondent is using the <wwwworbitz.com> domain name to transport Internet users to a website that promotes generic hyperlinks to various third-party websites, some of which compete directly with Complainant’s business. The Panel notes that Respondent’s resolving website displays links including, “Big-Time Cheap Airline Tickets,” “Cheap flights form only $44,” “Priceline Authorized Site,” “Airline Tickets Info,” and “Cheap Airline Ticket Reservations Here.” In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel determined that a domain name that was populated with commercial hyperlinks resolving to competing and related businesses did not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Similarly, the Panel finds that Respondent’s use of the <wwwworbitz.com> domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent holds registrations for other domain names that are examples of typosquatted versions of other complainant’s marks. Complainant provides the Panel with evidence of previous UDRP decisions held against Respondent. See AOL Inc. v. 21562719 Ont. Ltd., FA 1402476 (Nat. Arb. Forum Sept. 8, 2011); see also Fandango, LLC v. 21562719 Ont. Ltd., FA 1464081 (Nat. Arb. Forum Nov. 2, 2012); see also Stamina Products, Inc. v. 21562719 Ont. Ltd., FA 1420326 (Nat. Arb. Forum Jan. 23, 2012). In Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) the panel found bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting. The Panel agrees that Respondent has a pattern of bad faith registrations, evidence of bad faith use and registration under Policy ¶ 4(b)(ii).
Respondent hosts competing hyperlinks on the disputed domain name’s resolving website, disrupting of Complainant’s business. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel agreed that the presence of competing hyperlinks was sufficient evidence for finding that the respondent sought to disrupt the complainant’s business in bad faith. The Panel finds that Respondent’s is disrupting Complainant’s business with the competing hyperlinks, which constitutes Policy ¶ 4(b)(iii) bad faith.
Respondent no doubt commercially profits rom the competing hyperlinks on Respondent’s resolving website, a further indication of bad faith under Policy ¶ 4(b)(iv). The use of a confusingly similar domain name for purposes of promoting monetized hyperlinks has traditionally been found to be sufficient evidence to support a finding under Policy ¶ 4(b)(iv) likelihood of confusion for a respondent’s commercial gain. See 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.’”).
Complainant argues that the disputed domain name includes Complainant’s mark spelled correctly and thus demonstrates Respondent’s intent to capitalize on Complainant’s famous mark. The Panel agrees and finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii) with actual knowledge of Complainant’s rights in the ORBITZ mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Respondent’s <wwwworbitz.com> domain name is a typosquatted version of Complainant’s mark, containing ORBITZ with the “www” prefix and an extra “w.” Previous panels have traditionally found typosquatting where the disputed domain name contains a typographical error with respect to a complainant’s mark. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith. The Panel finds that Respondent’s typosquatting is further evidence of in bad faith.
The Panel finds that Complainant has satisfied 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 <wwwworbitz.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 27, 2014
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