Carnival Plc v.
Claim Number: FA0706000997973
Complainant is Carnival Plc (“Complainant”), represented by Brett
A. August, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <queenelisabeth2.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 4, 2007.
On June 6, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <queenelisabeth2.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 June 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2007 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@queenelisabeth2.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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:
Complainant is the largest
cruise company and one of the largest leisure travel companies in the
world.
Complainant operates more
than eighty cruise ships under various brands of ocean-liners.
One of Complainant’s most
well-known ships is operated under the mark QUEEN ELIZABETH 2.
Complainant has used this
mark since 1969 in connection with its ocean-liner, and holds numerous
trademark registrations throughout the world for the mark, including with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,501,896, issued
August 30, 1988).
Respondent is not commonly known by the <queenelisabeth2.com> domain name and
is not authorized to use Complainant’s QUEEN ELIZABETH 2 mark.
Respondent registered the <queenelisabeth2.com> domain name on October 17, 2005.
Respondent’s domain name resolves to a website displaying hyperlinks to other websites, some of which are for companies in direct competition with the business of Complainant.
Respondent’s <queenelisabeth2.com> domain name is confusingly similar to Complainant’s QUEEN ELIZABETH 2 mark.
Respondent does not have any rights or legitimate interests in the domain name <queenelisabeth2.com>.
Respondent registered and used the <queenelisabeth2.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
i. Respondent has no rights or legitimate interests in respect of the domain name; and
ii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registrations for the QUEEN ELIZABETH 2 mark throughout the world, including with the USPTO, establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of the DISNEY trademark with the USPTO prior to a respondent’s registration of the disputed domain name is sufficient to prove that that complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; it is sufficient that a complainant can demonstrate a mark in some jurisdiction).
Respondent’s <queenelisabeth2.com> domain name is confusingly similar to Complainant’s QUEEN ELIZABETH 2 mark under Policy ¶ 4(a)(i) inasmuch as the disputed domain name merely contains a variation of the name of “elizabeth” combined with the generic top-level domain (“gTLD”) “.com.” The inclusion of Complainant’s mark in its entirety, with the exception of the substitution of the letter “s” for the letter “z,” as well as the addition of a gTLD, does not sufficiently distinguish the <queenelisabeth2.com> domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that a respondent’s <newbergerberman.com> domain name was confusingly similar to a complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii),
Complainant must establish a prima facie
case that Respondent lacks rights or legitimate interests with regard to the <queenelisabeth2.com> domain name. Once Complainant has done
so, the burden shifts to Respondent to provide evidence that it possesses
rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted
that a respondent has no rights or legitimate interests with respect to a domain
name, it is incumbent on that 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 Woolworths plc. v.
Complainant has provided sufficient evidence to establish its prima facie case and therefore shift the burden to Respondent. While Respondent has not responded in the instant proceeding, allowing for the conclusion that Respondent lacks rights and legitimate interests, we will examine the available evidence to determine whether there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” See also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because a respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
We first note that Complainant alleges that Respondent is not commonly known by the <queenelisabeth2.com> domain name and is not authorized to use its QUEEN ELIZABETH 2 mark. From an examination of the evidence presented, including Respondent’s WHOIS information, we finds nothing to suggest that Respondent is commonly known by the disputed domain name under the parameters of Policy ¶ 4(c)(ii). See 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"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when it is not known by the mark in question).
Additionally, Respondent does not deny that its use of the <queenelisabeth2.com> domain name to display hyperlinks to websites which provide competing cruise services does not qualify as 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 M Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to a complainant’s competitors, was not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
As discussed above, the <queenelisabeth2.com>
domain name is confusingly similar to Complainant’s QUEEN ELIZABETH 2 mark. This creates a likelihood of confusion as to the
possibility that Complainant is the source or sponsor or is otherwise affiliated
with the disputed domain name and corresponding website. Moreover, we are entitled to and do conclude
that Respondent is commercially benefiting from the disputed domain name and
resulting website, because the website displays hyperlinks to other websites
for which Respondent presumably benefits through the earning of click-through
fees. Such use of a disputed domain name
qualifies as bad faith registration and use under Policy ¶ 4(b)(iv). See Red
Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum
July 24, 2006) (finding that a respondent engaged in bad faith registration and
use pursuant to Policy ¶ 4(b)(iv) by using a disputed
domain names to operate a commercial search engine with links to the products
of a complainant’s competitors, as well as by diverting Internet users to
several other domain names); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits
from its diversionary use of a complainant's mark when a domain name resolves
to commercial websites and that respondent fails to contest a complaint, it may
be concluded that that respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <queenelisabeth2.com>
domain name with at least constructive knowledge
of Complainant’s rights in the QUEEN ELIZABETH 2 trademark by virtue of Complainant’s prior registration of that mark with
the United States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <queenelisabeth2.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 17, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum