priceline.com LLC v. mark vicedomini / Priceline Motors
Claim Number: FA1605001673408
Complainant is priceline.com LLC (“Complainant”), represented by Jamie E. Platkin of Cantor Colborn LLP, Connecticut, United States. Respondent is mark vicedomini / Priceline Motors (“Respondent”), Louisiana, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pricelinemotors.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2016; the Forum received payment on May 5, 2016.
On May 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pricelinemotors.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2016 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 firstname.lastname@example.org. Also on May 5, 2016, 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 May 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant asserts trademark rights in PRICELINE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark PRICELINE in connection with the business of providing Internet-based travel services;
2. Complainant owns, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 2272659, registered August 24, 1999 for the trademark PRICELINE;
3. the disputed domain name was registered on March 7, 2014 and resolves to a website that advertises a used car sales business by the name of Priceline Motors; and
4. pre-Complaint correspondence sent by Complainant to Respondent was unanswered and failed to resolve the matter.
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.
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."
A preliminary issue arises for determination – namely, does the Complaint outline a dispute which is outside the scope of the Policy and the proper mandate of this Panel.
As noted, Complainant uses the trademark in connection with the business of providing travel services. Those services include car rental bookings. Respondent’s use of the disputed domain name is in respect of a website advertising the sale of pre-owned cars. There is no suggestion there of car rental or car leasing services. There is no suggestion there of an association or affiliation with Complainant, other than whatever suggestion might be carried by the use of the term, “priceline”.
For reasons given shortly, Panel finds that Complainant has trademark rights by reason of registration. Were it necessary to do so, Panel would on the evidence also find that Complainant had common law trademark rights by reason of extensive public use of the term, “priceline”.
Nonetheless, it is not immediately obvious that the Compliant makes out a case of domain name abuse. In spite of Complainant’s registration and public use of the term “priceline”, it is only a modestly distinctive trademark. Panel’s own research shows third party use of the term, in some cases in connection with businesses which predate Complainant’s incorporation and first use of the expression.
Further, Complainant’s relevant business is the arrangement of car rental bookings, not car sales, and the words “priceline motors” suggest something quite different to, say, “priceline rentals” or even “priceline cars”.
Moreover, the evidence of use of the name “priceline motors” points to a small but growing business which has been selling vehicles for perhaps two or three years.
Finally, the Complaint is laced with the language of the law of trademark infringement. It includes claims that Respondent is trading on the reputation in Complainant’s trademark and claims of trademark dilution. Ever present is the sense that Complainant simply does not like what Respondent is doing.
In The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470, the panel wrote:
“As the above factual recitation should make clear, this is not a garden-variety cybersquatting case. In fact, it is not a cybersquatting case at all. …
This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.
To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
Whilst here the parties have no commercial relationship with one another, it remains clear that what is essentially a business dispute or a breach of contract or, to make the point, a trademark infringement matter, which incidentally involves a domain name, is not suitable to arbitration under the Policy.
The Complainant exhibits a copy of an unanswered demand letter sent by Complainant’s representative to Respondent. It refers to the disputed domain name and threatens these Administrative Proceedings. It also complains about a Facebook page, about a Yellow Pages listing, and about the use of a physical sign at Respondent’s place of business. It makes demands in respect of those various matters.
For these reasons, Panel has carefully considered whether it has a proper mandate to decide this matter. Weighing the available evidence, it has determined that it should apply the Policy. The result might have been different with the benefit of a Response, but the Panel need not be astute to search out arguments for a respondent which does not care to do so for itself.
It follows that 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. Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for PRICELINE, the Panel is satisfied that it has trademark rights in that term.
For the purposes of comparing the disputed domain name to the trademark the top-level domain,“.com”, can be ignored. The domain name takes the whole of the trademark and adds the word “motors”. Clearly the compared terms are not identical and so the question is whether “pricelinemotors” is confusingly similar to the trademark.
Panelists are divided as to whether the reputation of a trademark is a relevant factor under paragraph 4(a)(i) of the Policy in the determination of confusing similarity. Those who take reputation into account would, in this case, see the word “motors” as descriptive and so a non-distinctive addition to the trademark. Those who consider that reputation should be disregarded have the slightly different task of deciding (i) whether the domain name would be decoded as “priceline” + “motors”, or as “price” + line” + “motors”, and (ii), what value to place on the word “motors”. This Panel finds that here both schools of thought would reach the same finding since the word “motors” is a common dictionary word and its presence makes no significant quantitative or other alteration to the trademark.
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.
The publicly available WHOIS information identifies “mark vicedomini / Priceline Motors” as the owner of the domain name. Absent a Response there is no evidence that Respondent is commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights. The domain name redirects Internet users to a website prominently showing the registered trademark as part of a trading name unconnected with Complainant’s business. Complainant’s trademark rights long predate registration (and apparent first use) of the domain name. Once more, in the absence of any submissions from Respondent and in light of Complainant’s prior entitlement, there is no basis to find that there is a bona fide offering of goods or services or that there is legitimate noncommercial or fair use of the domain name.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. Panel has already found that the domain name and trademark are confusingly similar. Panel finds that there is a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. That website exists for commercial gain.
Panel finds registration and use in bad faith and the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pricelinemotors.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 6, 2016
 The potential for which, argues Complainant, is increased by the adoption of the same blue colouring and lower case font for the word which Complainant has consistently used in connection with its business.
 See, for example, Latent Technology Group, Inc. v. Bryan Fitchie, File No. FA0007000095285 (NAF Sept. 1, 2000).
 See, for example, Luvilon Industries NV v. Top Serve Tennis Pty Ltd. (WIPO Case No. DAU2005-0004.
 See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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.”).
 See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
 See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
 See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
 See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting.
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