Tablet, Inc. v. domains Ventures
Claim Number: FA0608000781846
Complainant is Tablet, Inc. (“Complainant”), represented by Linda M. Novak of Fish & Richardson P.C., P.A., 1717 Main Street, Suite 5000, Dallas, TX, 75201. Respondent is domains Ventures (“Respondent”), 136 Xiaoxue Road, Xiamen, Fujian, II 361001, CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tablethotel.com>, registered with Moniker Online Services, 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 August 18, 2006; the National Arbitration Forum received a hard copy of the Complaint August 21, 2006.
On August 29, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <tablethotel.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 2006, 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@tablethotel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2006, 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, <tablethotel.com>, is confusingly similar to Complainant’s TABLET mark.
2. Respondent has no rights to or legitimate interests in the <tablethotel.com> domain name.
3. Respondent registered and used the <tablethotel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tablet, Inc., has utilized the TABLET mark in connection with its online travel agency services business since at least as early as March 2000. Complainant offers its online travel agency services under the TABLET mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,747,779 issued August 5, 2003).
Respondent, domains Ventures, registered the <tablethotel.com> domain name on November 20, 2003. The disputed domain name resolves to a website that provides links to third party websites offering online travel agency services, including temporary lodging reservation management, in direct competition with Complainant’s online travel agency 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. 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.”).
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 asserts and provides evidence of its federal trademark registrations for the TABLET mark with the USPTO. The Panel finds that Complainant’s federal trademark registrations with the USPTO establish Complainant’s rights in the mark in satisfaction of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Furthermore, the
Panel finds that the disputed domain name that Respondent registered, <tablethotel.com>, is confusingly similar to Complainant’s
registered TABLET mark pursuant to Policy ¶ 4(a)(i). Complainant asserts that the disputed domain name consists of
Complainant’s TABLET mark in its entirety, with the addition of the generic
term, “hotel,” and the generic top-level domain (“gTLD”) “.com.” In Novell, Inc. v. Taeho Kim,
FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel determined that the
<novellsolutions.com> domain name was confusingly similar to the NOVELL
mark despite the addition of the descriptive term “solutions,” because even
though “the word ‘solutions’ was descriptive when used for software, Respondent
used this word paired with Complainant's trademark NOVELL.” Additionally, prior panels have found that
the addition of a gTLD does not negate the creation of confusing similarity
between a domain name and a mark. For
instance, the panel in Valeant Pharms. Int’l v. Carpela, D2005-0786
(WIPO Sept. 2, 2005), concluded that the addition of the gTLD “.com” to the
complainant’s CESAMET mark did not sufficiently distinguish the
<cesamet.com> domain name from the mark.
Therefore, the Panel in the instant case may find that Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i), as Respondent’s <tablethotel.com> domain name features Complainant’s mark with the
addition of a generic term that is closely related to Complainant’s offering of
services.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with regard to the disputed domain name. However, once Complainant sufficiently establishes a prima facie case, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant demonstrated a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that Respondent is not commonly known by the <tablethotel.com> domain name pursuant to Policy ¶ 4(c)(ii). Based upon the evidence on record, Respondent is not associated with Complainant and is not authorized by Complainant to use the TABLET mark. Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the <tablethotel.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Furthermore, the evidence on record suggests that the disputed domain name, <tablethotel.com>, resolves to a website providing links to third-party websites that offer travel and hotel services in competition with Complainant’s online travel services business. The Panel also finds that Respondent presumably receives referral fees for the posting of the aforementioned advertisements on its website. In Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), the panel found that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the confusingly similar <tablethotel.com> domain name does not represent either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Additionally, the disputed domain name that Respondent registered, <tablethotel.com>, currently resolves to a website providing a link to another website offering to sell the disputed domain name registration. Consequently, the Panel finds that Respondent’s conduct does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent is using the confusingly
similar disputed domain name to operate a website containing links to
competitors of Complainant’s online travel services business. In State
Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000),
the respondent registered the <bigtex.net> domain name in order to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website. Consequently, the
panel found that the respondent registered and used the disputed domain name in
bad faith under Policy ¶ 4(b)(iv).
Similarly, in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006), the panel found that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant.
Thus, the Panel finds that Respondent’s registration and use of the <tablethotel.com>
domain name in the present case constitutes registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv).
Moreover, in light of Respondent’s use of the disputed domain name to divert Internet users to the websites of Complainant’s competitors, the Panel finds that Respondent registered and used the <tablethotel.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). In Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel held that a respondent violates Policy ¶ 4(b)(iii) by diverting business from the complainant to a competitor’s website. See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). Consequently, the Panel concludes that Respondent registered and used the <tablethotel.com> domain name to disrupt the business of Complainant, thereby demonstrating bad faith registration and use under Policy ¶ 4(b)(iii).
Additionally, Complainant avers that Respondent currently utilizes the disputed domain name to operate a website featuring a link to a website offering to sell the disputed domain name registration. Prior panels have held that similar conduct indicates bad faith registration and use pursuant to Policy ¶ 4(b)(i). In Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000), the panel found bad faith where the respondent offered the domain names for sale. Moreover, the panel in Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000), found bad faith where the respondent offered the disputed domain names for sale. Therefore, the Panel in the present case finds that Respondent registered and used the <tablethotel.com> domain name in bad faith under Policy ¶ 4(b)(i).
The Panel finds that Complainant 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 <tablethotel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 10, 2006.
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