Trip Network Inc. d/b/a Cheap Tickets, Inc. v. Sigfredo Alviera
Claim Number: FA0702000914943
Complainant is Trip Network Inc. d/b/a Cheap
Tickets, Inc. (“Complainant”),
represented by Julie N. Matthews, of Wildman, Harrold, Allen & Dixon LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net> and <cheapticketscancun.org>, registered with Wild West Domains, Inc.
The undersigned Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2007.
On February 12, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net> and <cheapticketscancun.org> domain names are registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 February 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 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 email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 12, 2007.
On March 19, 2007, a timely Additional Submission was received from Complainant and was considered.
On March 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is the owner of trademark registrations for
CHEAPTICKETS.COM, CHEAPTICKETS & Design, CHEAP TICKETS INC., and CHEAP
TICKETS INC. & Design. For many
years, Complainant has used those Names and Marks in connection with travel
agency services including making travel arrangements; making reservations and
bookings for transportation; travel booking agencies; travel clubs; travel
guide services; arranging travel tours; and travel information services. These services are offered to the general
public throughout the
The disputed domain names registered by Respondent are identical and/or
confusingly similar to the Complainant’s Names and Marks, as they wholly
incorporate the Complainant’s Names and Marks and merely add the common
geographically descriptive term “
The likelihood of confusion is exacerbated because Respondent’s web sites offer travel services for trips to Mexican destinations, including Cancun; the Dominican Republic; Las Vegas, Nevada; Orlando, Florida; and Hilton Head, South Carolina. They also allow consumers to make reservations, book transportation, and arrange travel tours, services that are similar to and offered in competition with those offered by Complainant under its Names and Marks.
Respondent has no rights or legitimate interests in the disputed domain
names. Since as early as 1986,
Complainant has been engaged in the business of offering travel services
Complainant also owns trademark registrations for Complainant’s Names
and Marks in multiple jurisdictions worldwide, including
Respondent registered the disputed domain names in 2006, long after Complainant’s acquisition of trade identity rights in the Names and Marks. Respondent does not own any trade identity rights in the wording “CHEAPTICKETS.” Respondent is not a licensee of Complainant and has never been authorized to use Complainant’s Names and Marks.
Respondent’s domain names were registered and are being used in bad faith. First, by using the disputed domain names, which wholly appropriate Complainant’s Names and Marks, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion with Complainant’s Names and Marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s web sites and services. Respondent has also prominently displayed Complainant’s CHEAP TICKETS Name and Mark on Respondent’s websites to intentionally create a likelihood of confusion between Respondent’s services and websites and Complainant’s services and websites. Respondent’s use of the subject domains attracts Complainant’s customers and potential customers to Respondent’s websites which are in direct competition with Complainant’s websites and travel services industry.
Also, Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business by diverting consumers intending to reach Complainant’s website to Respondent’s website, which directly compete with Complainant. The fact that Respondent’s websites display travel services content is further evidence of Respondent’s bad faith intent to profit from its use of Complainant’s Name and Marks. Respondent’s “CHEAPTICKETSCANCUN.ORG” also contains tabs at the top of its page that mimic similar tabs available at Complainant’s <cheaptickets.com> domain name.
Respondent cannot claim lack of actual or constructive knowledge of Complainant because simple online searches would have quickly revealed Complainant’s ownership and use of “CHEAPTICKETS” in its domain names.
Upon information and belief, Respondent is engaging in various other activities in which it is holding itself out as “Cheap Tickets” and “Cheap Tickets Cancun” and using Complainant’s Names and Marks for its own commercial gain. Such information includes the distribution of unsolicited facsimile advertisements for travel services to Complainant’s customers and potential customers. Complainant believes that Respondent has been cited on two separate occasions by the Federal Communication Commission for violations of the Telephone Communications Protection Act based on distribution of unsolicited facsimile advertisements. Some consumers were erroneously led to believe they were dealing with Complainant, purchased travel services, and experienced an extremely poor quality of service. They later contacted Complainant for relief. Lastly, Respondent’s activities constitute trademark infringement and unfair competition under federal and state law and have caused and will continue to cause substantial and irreparable harm to Complainant in its business reputation and goodwill.
Respondent states that the disputed domain names are not identical or confusingly similar to Complainant’s Names and Marks. Respondent says the likelihood of confusion is not increased because Respondent’s and Complainant’s services are not virtually identical. Respondent offers packages that deal with hotel stays only and are available in only ten locations while Complainant offers a vast array of services throughout the world which includes airline tickets, rental cars, cruises, theater tickets, basketball tickets, etc.
Moreover, Respondent’s sales are for customers that elect to stay in
Respondent has rights or legitimate interests in the domain names in
dispute because it has been commonly known by the domain names at issue. Those websites are well known in
Respondent is making a fair use of the domain names. Irrespective of the fact that Respondent
offers hotel packages to only ten places, Complainant offers trips to worldwide
locations. Respondent does not divert
customers to a second website and/or have pop-ups to trigger revenue for
non-related hotel packages. Respondent
specializes in stays in
Respondent did not register the disputed domain names in bad faith. Respondent has not intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service. Complainant cites only two alleged acts of confusion. Those two alleged customer complaints are very suspicious because one of them contains statements without a factual basis and the other refers to being misled by faxes but the complaints do not contain anything about faxes.
Complainant also states that Respondent’s use of the disputed domain names created a likelihood of confusion and cites the case of FMR Corp v. Heldon Coach, FA 289039 (Nat. Arb. Forum Aug 9, 2004). In that case, the complainant and respondent had identical names and both performed virtually identical services. In our case, the services offered are not virtually identical.
Respondent did not register the disputed domain names primarily for the purpose of disrupting the business of a competitor. Complainant and Respondent are not competitors. Complainant is a “full service” company while respondent offers only ten destinations. Respondent and Complainant are not in competing businesses and are not in the same market area.
Complainant had years to register the domain names at issue but, for whatever reason, decided not to register them. Respondent did not acquire the domain names primarily for the purpose of selling, renting or otherwise transferring them to Complainant. In fact, Respondent rejected Complainant’s offer to purchase the domain names.
C. Additional Submissions
Complainant submitted a timely additional submission which states:
1- Respondent has failed to refute Complainant’s position that the likelihood of confusion cannot be remedied by merely adding a geographic name to Complainant’s Mark.
2- Respondent’s argument that it and Complainant offer services in two completely unique fields of service is incorrect.
3- Respondent cannot demonstrate a legitimate use of the term “cheaptickets” in the subject domains considering that fact that, by Respondent’s own admission, it only offers hotel stays, not tickets.
As to number one above, Complainant relies on the holding in the Best Fares case cited above which held that the addition of a geographic term failed to sufficiently distinguish the disputed domain name.
Complainant says that Respondent’s contention that it offers or markets non-competing services is ridiculous. Complainant and Respondent compete with each other for consumers seeking to book hotel rooms. Equally flawed and disingenuous is Respondent’s assertion that its marketing tactics are not intended to mislead or divert customers. Respondent cannot provide any legal precedent to support its assertions. The case Respondent offers to support its contentions is Soccerplex, Inc. v. NBA Inc. FA 94361 (Nat. Arb. Forum May 25, 2000). The panel in that case found that the services offered by the complainant and respondent were actually different. That is not the case here. Both Complainant and Respondent offer booking services for hotel rooms to the same locations via their websites.
Respondent cannot refute any of the bad faith factors as set forth in ICANN Policy 4(b). Complainant has demonstrated that Respondent acted with bad faith in this matter. Respondent provides no credible evidence supportive of its lack of bad faith. The panel should consider what constitutes bad faith under the “totality of the circumstances.” See LA Weight Loss Centers Inc. v. Cayman Trademark Trust, FA 464493 (Nat. Arb. Forum May 31, 2005). Trademark registrations provide would-be infringers with constructive knowledge of a protected mark. Registration of an infringing domain name despite actual or constructive knowledge of the complainant’s rights is evidence of bad faith registration pursuant to ICANN Policy 4(a)(iii). Here, even a cursory search would have put Respondent on actual notice.
1 – The disputed domain names are identical or confusingly similar to Complainant’s Names and Marks
2 – Respondent has no rights or legitimate interests in respect of the disputed domain names.
3 – Respondent registered and is using the disputed domain names in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 that it has registered the
CHEAPTICKETS (Reg. No. 2,722,243 issued June 3, 2003) and CHEAPTICKETS.COM
(Reg. No. 2,665,841 issued December 24, 2002) marks with the United States
Patent and Trademark Office (“USPTO”).
The Panel finds that these trademark registrations are sufficient for
Complainant to establish rights in the marks pursuant to Policy ¶ 4(a)(i). See Reebok
Int’l Ltd. v.
Complainant also asserts that the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net> and <cheapticketscancun.org> domain names are confusingly similar to its CHEAPTICKETS mark because each contains the entire registered mark and merely adds the term “cancun,” a geographic identifier related to Complainant’s travel services business, as well as a generic top-level domain (“gTLD”). The Panel finds that the mere addition of the geographic term “cancun” does not overcome a finding of confusing similarity under Policy
¶ 4(a)(i) and that the affixation of a gTLD to each domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations). The Panel finds that Respondent has not met its burden of showing it has rights or legitimate interests in respect of the disputed domain names. It obviously is using the names to trade on the goodwill of Complainant.
Complainant alleges that Respondent’s website at the disputed domain names is virtually identical to Complainant’s website at the <cheaptickets.com> domain name, and that Respondent is providing travel reservation services in direct competition with Complainant. The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
Complainant alleges that Respondent is operating a competing travel website at the
<cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net> and <cheapticketscancun.org> domain names. The Panel finds that Respondent has registered and is using the disputed domain names primarily for the purpose of disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii). See Spark Networks PLC v. HereHoulihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Here, the parties are in the same business of providing assistance to travelers even though one provides far more services than the other. That fact does not distinguish the nature of the business.
The Panel also finds that
Respondent’s operation of a travel services website in direct competition with
Complainant demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(iv). Specifically the Panel finds
that Respondent is taking advantage of the confusing similarity between the
disputed domain names and Complainant’s CHEAPTICKETS mark in order to profit
from the goodwill associated with the mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net> and <cheapticketscancun.org> domain names be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: March 27, 2007
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