The Coryn Group, Inc. v. Forum LLC
Claim
Number: FA0505000473209
Complainant is The Coryn Group, Inc. (“Complainant”), represented
by Thomas P. Arden of Holland and Knight LLP,
131 South Dearborn Street, 30th Floor, Chicago, IL, 60603. Respondent is Forum LLC (“Respondent”), PO Box 2331, Roseau, Roseau, 00152, DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aplevacations.com>, registered with Fabulous.com
Pty Ltd.
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 May 6,
2005; the National Arbitration Forum received a hard copy of the Complaint May
9, 2005.
On
May 9, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <aplevacations.com> is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com
Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
May 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 2005, 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 Respondent's registration as technical, administrative and billing
contacts, and to postmaster@aplevacations.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson 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." 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 makes the following assertions:
1. The domain name that Respondent
registered, <aplevacations.com>, is confusingly similar to
Complainant’s APPLE VACATIONS mark.
2. Respondent has no rights to or legitimate
interests in the <aplevacations.com> domain name.
3. Respondent registered and used the <aplevacations.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Coryn Group, Inc., is a leading travel and tour provider, offering vacation
packages throughout the United States to domestic and foreign
destinations. Complainant holds a
trademark registration with the United States Patent and Trademark Office for
the APPLE VACATIONS mark (Reg. No. 1,462,268 issued October 20, 1987).
Respondent
registered the <aplevacations.com> domain name January 1,
2003. Respondent is using the disputed
domain name to redirect Internet users to its commerical website featuring
travel services in direct competition with Complainant’s travel 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."
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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 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
established rights in the APPLE VACATIONS mark through registration with the
United States Patent and Trademark Office and by continuous use of the mark in
commerce. See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
The domain name that Respondent registered, <aplevacations.com>,
is confusingly similar to Complainant’s APPLE VACATIONS mark because Respondent’s domain name incorporates
Complainant’s mark, omits the space between the words “apple” and vacation” and
omits the letter “p” from the word “apple” in the mark. These minor omissions do not negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces
are impermissible in domain names and a generic top-level domain such as ‘.com’
or ‘.net’ is required in domain names”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding that the respondent’s domain name <charlesjourdan.com> is
identical to the complainant’s marks); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
that the domain names, <davemathewsband.com> and
<davemattewsband.com>, are common misspellings and therefore confusingly
similar); see also State Farm Mut.
Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> is confusingly similar
to the complainant’s STATE FARM mark); see also Compaq Info. Techs. Group,
L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark)
Additionally,
Respondent’s <aplevacations.com> domain name is confusingly
similar to Complainant’s APPLE VACATIONS mark because the domain name
incorporates a misspelling of Complainant’s mark and adds the generic top-level
domain “.com.” The addition of a
generic top-level domain name to Complainant’s mark does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> was identical to the complainant's
registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> was plainly identical to the
complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and alleged that Respondent has no such rights to or
legitimate interests in the <aplevacations.com> domain name. Once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to prove that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent has not established rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to the respondent to demonstrate that such a right or legitimate interest
does exist).
Where
Complainant makes a prima facie showing and Respondent does not respond,
the Panel may accept all reasonable allegations and inferences in the Complaint
as true. See 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.”); see also
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 complainant
to be deemed true).
Respondent is
using the <aplevacations.com> domain name, which is confusingly
similar to Complainant’s APPLE VACATIONS mark, to redirect Internet users to
its commerical website featuring travel services in direct competition with
Complainant’s travel business. Such use
is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<aplevacations.com> domain name or authorized or licensed to
register domain names featuring Complainant’s APPLE VACATIONS mark. Thus, the Panel finds that Respondent does
not have rights or legitimate interests in the <aplevacations.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s rights in the mark precede the
respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleged as well that Respondent acted in bad faith in registering and using the
disputed domain name. Respondent is using
the <aplevacations.com> domain name, which is confusingly similar
to Complainant’s APPLE VACATIONS mark, to redirect Internet users to its
commerical website featuring travel services in direct competition with
Complainant’s travel business. Such use
constitutes disruption and is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that the respondent registered a
domain name primarily to disrupt the business of its competitor because it
directed “its web site to travel-related services in
competition with the complainant and is deriving a financial benefit from such
direction and redirection of users to such sites, particularly, through banner
advertisements, pop-up windows and its affiliate relationships”); see also S.
Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent acted in
bad faith by attracting Internet users to a website that competes with the
complainant’s business).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to competing travel services.
Since Respondent is using a domain name that is confusingly similar to
Complainant’s mark, consumers searching for Complainant online who access
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus, the
Panel finds that Respondent’s commercial use of the <aplevacations.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO
Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of
the recognition that eBay has created for its mark and therefore profiting by
diverting users seeking the eBay website to the respondent’s site).
Furthermore,
Respondent registered the <aplevacations.com> domain name with
actual or constructive knowledge of Complainant’s rights in the APPLE VACATIONS
mark due to Complainant’s registration of the mark with the United States
Patent and Trademark Office. Moreover,
the Panel finds that Respondent registered the disputed domain name with actual
knowledge of Complainant’s rights in the mark because of the obvious link
between Complainant’s business and the content advertised on Respondent’s website. Thus, Respondent registered and used the <aplevacations.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aplevacations.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 21, 2005.
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