Viking River Cruises, Inc. and Viking River Cruises (Bermuda) LTD v. Stephen Gothard NA
Claim Number: FA1911001871458
Complainant is Viking River Cruises, Inc. and Viking River Cruises (Bermuda) LTD (“Complainant”), represented by Robert M. O’Connell of Orrick, Herrington & Sutcliffe LLP, California, USA. Respondent is Stephen Gothard NA (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vikingrivercruises.biz>, registered with Wild West Domains, LLC.
The undersigned certifies that he 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2019; the Forum received payment on November 15, 2019.
On November 15, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <vikingrivercruises.biz> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 November 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2019 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@vikingrivercruises.biz. Also on November 19, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant claims rights in the VIKING CRUISES, VIKING RIVER CRUISES and VIKING OCEAN CRUISES service marks as evidenced by its ownership of its international portfolio of trademark registrations described below and submits that, pertinent to this Complaint, it has additionally acquired rights at common law by virtue of its longstanding and continuous use of the VIKING CRUISES and VIKING RIVER CRUISES marks for more than twenty years including by means of its long use of its domain name <vikingrivercruises.com> which is the address for its customer-facing website.
Complainant argues that the disputed domain name is identical and confusingly similar to its VIKING CRUISES, VIKING RIVER CRUISES and VIKING OCEAN CRUISES marks. Complainant specifically argues that the disputed domain name is identical to Complainant’s VIKING RIVER CRUISES mark inasmuch as it incorporates Complainant’s mark in its entirety, adding only the generic top-level domain <.biz> extension.
Complainant submits that the gTLD <.biz> extension may be ignored for the purpose of comparison and argues that its ownership of the registered trademarks creates a rebuttable presumption that the registered marks are distinctive, shifting the burden to Respondent to refute this assumption. See Papa John’s International, Inc. v. Pratap, FA 1427509 (Forum March 20, 2012) (“[O]nce the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.”).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name. arguing that Respondent has never been known as, or referred to as, “VIKING RIVER CRUISES” or any variation thereof. The WHOIS record for the disputed domain name at the time of filing of the original Complaint in this proceeding did not identify the Respondent beyond “Registration Private/Domains By Proxy, LLC.” However, after the submission of the initial Complaint, the registrar informed the Forum that the registrant is “Stephen Gothard NA.”
Complainant asserts that Respondent is not authorized or licensed to use the VIKING RIVER CRUISES mark; that Respondent is not an employee or agent of Complainant, and is not affiliated with Complainant in any way; that Complainant has never authorized or licensed anyone, including this Respondent, to incorporate any of its VIKING CRUISES trademarks into a domain name, or to otherwise use any of Complainant’s trademarks in any fashion; and that Respondent is not an authorized vendor, supplier or distributor of Complainant’s services.
Complainant further submits that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a non-commercial fair use of the disputed domain name. Complainant asserts that the URL to which the disputed domain name resolves generates a web page with an error message that simply states: “This site can’t be reached”. Complainant submits that it is well established that a domain name that resolves to an inactive website is not a bona fide offering of goods or services. See Connections Academy LLC v. bongjoosong, FA 1005001325725 (Forum Jul. 29, 2010) (finding that “Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that the registrant of the disputed domain name was on notice of Complainant’s prior rights in the VIKING CRUISES mark when the disputed domain name was registered. Complainant asserts that it first adopted and first used the VIKING RIVER CRUISES mark over 20 years ago, long prior to 2019 when the disputed domain name was registered as evidenced by Complainant’s first registration VIKING RIVER CRUISES mark on January 23, 1998 in Switzerland.
Complainant argues that Respondent is not actively using the disputed domain name for a legitimate web site. The URL to which the disputed domain name resolves currently generates an error message that simply states: “This site can’t be reached”. Complainant submits that use of a domain name to resolve to an inactive website constitutes use and registration in bad faith. See Connections Academy LLC v. bongjoosong, FA 1005001325725 (Forum Jul. 29, 2010) (finding that “Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainant further submits that Respondent is using the disputed domain name to impersonate the Complainant in furtherance of a fraudulent scheme.
Complainant refers to evidence adduced in the annex to the Complaint that shows that Respondent is using the disputed domain name as an email address to transmit messages that appear to come from the Complainant as part of an elaborate fraudulent scheme. Respondent (often using the pseudonym Michael Hobson) uses the disputed domain name to send out fraudulent and misleading email solicitations to job seekers as if they are originating from the Complainant.
The exhibited emails feature Complainant’s trademarks (including its logo and tagline), request that the recipients fill out questionnaires with sensitive personal information, and falsely list the sender as being employed by Complainant and located at Complainant’s own address, i.e., 5700 Canoga Avenue, Woodland Hills, California 91367. Complainant submits that it has received complaints from many individuals who have received these fraudulent emails and who are concerned about the nature of the requested information and argues that such fraudulent activities are per se evidence of bad faith use of the disputed domain name. See CareerBuilder, LLC v. Stephen Baker, D2005-0251 (WIPO May 6, 2005) (finding evidence of bad faith where respondent used the disputed domain name to send emails that appeared to be coming from the complainant).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has a long-established international cruise-ship holiday business and maintains a fleet of cruise ships providing both sea and river cruises.
Complainant advertises, promotes, and renders its cruise-line services under the VIKING CRUISES, VIKING RIVER CRUISES and VIKING OCEAN CRUISES service marks and is the owner of a large international portfolio of service mark registrations service mark including the following:
Swiss registered trademark VIKING RIVER CRUISES, registration number 450198, registered on January 23, 1998 in classes 39 and 42.
U.S. Trademark Registration VIKING RIVER CRUISES registration number. 2,796,425, registered on December 23, 2003, for services in international classes 39 and 42;
U.S. Trademark Registration VIKING RIVER CRUISES registration No. 3965566, registered on May 24, 2011, for services in international class 39;
U.S. Trademark Registration VIKING RIVER CRUISES., registration number 4422239, registered on October 22, 2013, for goods in international call 41;
U.S. Trademark Registration VIKING RIVER CRUISES., registration number 4051802, registered on November 8, 2011, for services in international class 43.
Complainant has an established web-presence and registered the domain name <vikingrivercruises.com> on February 25, 1999 which has since that time resolved to its business website at the URL <www.vikingrivercruises.com>.
The disputed domain name was registered on July 25, 2019 using a privacy service to conceal the name of the registrant.
There is no information available about the Respondent except for that provided by Complainant in the Complaint and its Annexes, the Registrar’s WhoIs, and the Registrar’s response to the FORUM’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
Rules ¶15(a) 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."
Policy ¶ 4(a) 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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing, unchallenged evidence of its rights in the VIKING CRUISES, VIKING RIVER CRUISES and VIKING OCEAN CRUISES trademarks acquired through its abovementioned portfolio of trademark registrations and the goodwill accruing to the marks by extensive and long use in its cruise-line business.
This Panel finds that the disputed domain name <vikingrivercruises.biz> is identical to Complainant’s VIKING RIVER CRUISES mark as the gTLD <.biz> extension may be ignored for the purposes of comparison. Additionally, the disputed domain name is confusingly similar to both Complainant’s VIKING CRUISES and VIKING OCEAN CRUISES marks as it incorporates the former in its entirety and incorporates the two elements, including the distinctive VIKING element of the latter.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name, convincingly arguing that Respondent has never been known as, or referred to as, “VIKING RIVER CRUISES” or any variation thereof; that the WHOIS record for the disputed domain name at the time of filing of the original complaint in this proceeding did not identify the Respondent beyond “Registration Private/Domains By Proxy, LLC.”; that Respondent has not been authorized or licensed to use the VIKING RIVER CRUISES mark in the disputed domain name; that Respondent is not an employee or agent of Complainant, and is not affiliated with Complainant in any way; that Complainant has never authorized or licensed anyone, including this Respondent, to incorporate any of its VIKING CRUISES trademarks into a domain name, or to otherwise use any of Complainant’s trademarks in any fashion; and that Respondent is not an authorized vendor, supplier or distributor of Complainant’s services; and additionally that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or any non-commercial or fair use, but is instead using the disputed domain name as an email address to impersonate Complainant and mislead innocent individuals seeking employment; and finally that Respondent making a non-commercial fair use of the disputed domain name; and finally that the disputed domain name resolves generates an inactive web page with an error message that simply states: “This site can’t be reached”.
It is well established that in such circumstances the burden of production shifts to Respondent to prove his rights or legitimate interest. Respondent has failed to discharge the burden and so this Panel finds on the balance of probabilities that Respondent has no rights or legitimate interest in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in in Policy ¶ 4(a)(ii).
On the evidence adduced, on the balance of probabilities, Complainant had a substantial international reputation in the cruise-line business when the disputed domain name was registered. It is highly implausible that the registrant chose and registered the disputed domain name for any reason other than to take predatory advantage of Complainant’s reputation in the identical VIKING RIVER CRUISES mark.
The uncontested evidence shows that the disputed domain name is being used by Respondent, posing as Complainant, taking bad faith advantage of vulnerable applicants for employment in a shameful, abusive manner, by inducing them to disclose personal information in what is most probably a scam. Complainant has adduced in evidence copies of correspondence, where job applicants were requested, by Respondent as part of the application process to complete a “job interview questionnaire” and provide scanned copies of the applicant’s International Passport, Working Place ID card, any Government Approved ID card or Educational Certificates.
This Panel finds on the uncontested evidence, that the disputed domain name was registered and is being used in bad faith and Complainant has therefore succeeded in the second element of the test in in Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vikingrivercruises.biz> domain name be TRANSFERRED from Respondent to Complainant.
_______________________________
James Bridgeman SC
Panelist
Dated: December 14, 2019
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