Viking River Cruises, Inc. and Viking River Cruises (Bermuda) Ltd v. Jon Kleppe
Claim Number: FA2005001897015
Complainant is Viking River Cruises, Inc. and Viking River Cruises (Bermuda) Ltd (“Complainant”), represented by Betsy Wang Lee of Orrick, Herrington & Sutcliffe LLP, California, USA. Respondent is Jon Kleppe (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <book-vikingriver.com> and <book-vikingocean.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2020; the Forum received payment on May 19, 2020.
On May 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <book-vikingriver.com> and <book-vikingocean.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2020 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@book-vikingriver.com, postmaster@book-vikingocean.com. Also on May 20, 2020, 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.
A timely Response was received and determined to be complete on June 8, 2020.
An Additional Submission of the Complainant was received on June 16, 2020.
On June 15, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainants own and operate one of the world’s leading river and ocean cruise lines. Complainant has rights in the VIKING RIVER CRUISES marks through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,796,425, registered Dec. 23, 2003). See Compl. Ex. 6. Respondent’s <book-vikingriver.com> and <book-vikingocean.com> domain names are confusingly similar to Complainant’s marks as Respondent incorporates the dominant portion of Complainant’s marks and adds generic terms, a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <book-vikingriver.com> and <book-vikingocean.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely redirecting Internet users to Complainant’s website for some presumed financial gain. Additionally, the disputed domain names occasionally fail to load and resolve to an inactive webpage.
Respondent registered and used the <book-vikingriver.com> and <book-vikingocean.com> domain names in bad faith. Specifically, Respondent is attempting to pass off as Complainant for commercial gain. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the VIKING RIVER CRUISES marks.
B. Respondent
Respondent is the owner of a travel agency that operates a co-branded website with Complainant. Complainant provided URLs to Respondent that are complicated and difficult to market, so Respondent registered these domain names to aid in marketing and booking Complainant’s services.
The disputed domain names are not confusingly similar to Complainant’s websites.
The resolving webpages for the cobranded URLs and the disputed domain names show Respondent’s company at the top of the pages and are used for a legitimate purpose.
C. Additional Submissions
On June 16, 2020, Complainant’s Additional Submission was received, according to which Complainant has never authorized Respondent to create or register the Domain Names at issue. In fact, Complainant contends that Respondent’s creation and registration of the Domain Names is expressly prohibited by Complainant’s Advertising and Commissions Policy to which Respondent is bound, and in particular section 6.3 thereof, (submitted as Exhibit 1 by Complainant) which states, verbatim: “Travel Agent shall not directly or indirectly register, attempt to register, own, use or control any domain name, subdomain or Uniform Resource Locator (URL) containing the Viking name, any Viking Marks, or any marks confusingly similar thereto.”
Complainant claims rights in the VIKING RIVER CRUISES marks through its registration of the mark with the USPTO (e.g., Reg. No. 2,796,425, registered Dec. 23, 2003). The Panel finds that the Complainant has rights in the VIKING RIVER CRUISES marks under the Policy.
Complainant argues Respondent’s <book-vikingriver.com> and <book-vikingocean.com> domain names are confusingly similar to Complainant’s marks as Respondent incorporates the dominant portion of Complainant’s marks and adds generic terms, a hyphen and the “.com” gTLD. The Panel finds that indeed both of the above-referenced domain names under review are confusingly similar to Complainant’s marks under the Policy.
Complainant asserts that it first adopted and used the VIKING RIVER CRUISES Mark, the VIKING RIVERS Mark, and the VIKING OCEAN CRUISES Mark long prior to the date that Respondent registered the disputed Domain Names. Complainant provides screenshots of an online tool that for domain name redirection, showing that the disputed domain names indeed redirect Internet users to Complainant’s website. Complainant further argues that the Respondent’s appropriating of Complainant’s Marks in its Domain Names and creating a false impression of sponsorship or affiliation with Complainant and that Respondent has set out to confuse Internet users into visiting the disputed Domain Names, and from there, to redirect users to Complainant’s websites for commercial gain. Respondent’s use of the Domain Names in these ways is clearly 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 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 claims rights in the VIKING RIVER CRUISES marks through its registration of the mark with the USPTO (e.g., Reg. No. 2,796,425, registered Dec. 23, 2003). The Panel finds that the Complainant has rights in the VIKING RIVER CRUISES marks under Policy ¶ 4(a)(i). Complainant argues Respondent’s <book-vikingriver.com> and <book-vikingocean.com> domain names are confusingly similar to Complainant’s marks as Respondent incorporates the dominant portion of Complainant’s marks and adds generic terms, a hyphen and the “.com” gTLD . Adding generic terms, a hyphen, and a gTLD to an otherwise recognizable mark may not be sufficiently distinguished from a complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <book-vikingriver.com> and <book-vikingocean.com> domain names are confusingly similar to Complainant’s marks.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. Complainant argues that Respondent has no rights or legitimate interests in the <book-vikingriver.com> and <book-vikingocean.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The WHOIS of record identifies the Respondent as “Jon Kleppe” and none of information submitted indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <book-vikingriver.com> and <book-vikingocean.com> domain names as Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii)
Complainant argues Respondent registered and used the <book-vikingriver.com> and <book-vikingocean.com> domain names in bad faith. Specifically, Respondent is attempting to pass off as Complainant for commercial gain. Registering a disputed domain name so to deceive Internet users as to the affiliation of the respondent in relation to the complainant for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent had knowledge of Complainant’s rights in the VIKING RIVER CRUISES marks at the time of registering the <book-vikingriver.com> and <book-vikingocean.com> domain names. To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent has had professional transactions with Complainant. As such, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith. Therefore, the Panel finds that the Respondent registered and used the <book-vikingriver.com> and <book-vikingocean.com> domain names in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <book-vikingriver.com> and <book-vikingocean.com> domain names be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: June 29, 2020
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