Carnival Plc v. Sebastian Szerer
Claim Number: FA0706001015446
Complainant is Carnival Plc (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Sebastian Szerer (“Respondent”), Lands of Turnberry Maidens Rd, Girvan Ayrshire KA26 9L, UK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cunard-qe2.com>, registered with Advantage Interactive 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 June 25, 2007; the National Arbitration Forum received a hard copy of the Complaint June 25, 2007.
On June 27, 2007, Advantage Interactive Ltd confirmed by e-mail to the National Arbitration Forum that the <cunard-qe2.com> domain name is registered with Advantage Interactive Ltd and that Respondent is the current registrant of the name. Advantage Interactive Ltd verified that Respondent is bound by the Advantage Interactive Ltd 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 July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 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@cunard-qe2.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 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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, <cunard-qe2.com>, is confusingly similar to Complainant’s CUNARD and QE2 marks.
2. Respondent has no rights to or legitimate interests in the <cunard-qe2.com> domain name.
3. Respondent registered and used the <cunard-qe2.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Carnival Plc, is the largest cruise company and one of the largest leisure travel companies in the world. In conjunction with the provision of these travel-related products and services, Complainant registered the CUNARD mark (Reg. No. 927,552 issued January 18, 1972) and the QE2 mark (Reg. No. 1,435,958 issued April 7, 1987) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <cunard-qe2.com> domain name January 10, 2007. The disputed domain name resolves to a holding page that allows users to purchase an e-mail address of his or her choosing.
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 established with extrinsic proof in this proceeding that it has rights in the CUNARD and QE2 marks through registration of the marks with the USPTO. The Panel finds that Complainant’s timely registration of the marks with the USPTO sufficiently establishes rights in the marks pursuant to Policy ¶ 4(a)(i). See 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 established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The disputed domain name contains Complainant’s CUNARD and QE2 marks in their entirety and adds both a hyphen and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a hyphen and a gTLD to otherwise identical marks fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the domain names contained in their entirety within the disputed domain name. In situations where Complainant makes a prima facie case in support of its allegations, the burden of proof shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). 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 Policy ¶ 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 F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See 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 right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain name resolves to a website
offering Internet users the opportunity to purchase an e-mail address. The Panel finds that Respondent’s use is
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v.
Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding
that the respondent’s use of the complainant’s WELLS FARGO mark to redirect
Internet users to a domain name featuring magazine subscriptions was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant urges that Respondent is not generally known by the disputed domain name and has not acquired any trade or service mark rights in that name or mark. Indeed, no evidence suggests that Respondent is commonly known by the disputed domain name. Furthermore, an analysis of Respondent’s WHOIS registration information reveals that the registrant of the <cunard-qe2.com> domain name is “Sebastian Szerer.” In light of the aforementioned facts, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also urges that Respondent acted in bad faith in registering and using a domain name that contains in their entirety two of Complainant’s protected marks. As noted above, the disputed domain name is confusingly similar to Complainant’s marks and the disputed domain name resolves to a website that offers Internet users the opportunity to purchase e-mail addresses, presumably with the intent of procuring financial gain for Respondent. The end result of this diversionary use is that Internet users expecting to view information related to Complainant’s famous marks are likely to become confused as to the source and affiliation of the resulting website. The Panel finds that such use amounts to an attraction for commercial gain pursuant to Policy ¶ 4(b)(iv) and supports findings of bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
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 <cunard-qe2.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 8, 2007
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