Claim Number: FA0802001152430
PARTIES
Complainant is Tahiti One Travel (“Complainant”), represented by Brian
A. Hall, 810 Cottageview Drive, Unit G-20, Traverse City, MI 49684. Respondent is Alexandre Menini (“Respondent”), Via della Concia,19, Castelfidardo (AN) 60022, IT,
IT.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <easytahiti.org>,
registered with eNom, Inc.
PANEL
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.
Robert T. Pfeuffer, Senior
District Judge as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on February 19,
2008; the National Arbitration Forum received a hard copy of the
Complaint on February 20, 2008.
On February 19, 2008,
eNom, Inc. confirmed by e-mail to the
National Arbitration Forum that the <easytahiti.org> domain name is
registered with eNom, Inc. and that the
Respondent is the current registrant of the name. eNom, Inc.
has verified that Respondent is bound by the eNom,
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 27, 2008,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 18, 2008 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@easytahiti.org by
e-mail.
A timely Response was received and determined to be
complete on March 18, 2008.
On March 26, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has rights in the
EASYTAHITI.COM trademark by virtue of its registration with the Institut
National de la Propriete Industrielle (“INPI”), the French Patent Trademark
under Registry number 07-3-500-008 issued May 9, 2007.
Complainant further contends that the Respondent’s <easytahiti.org> domain name is
identical to Complainant’s EASYTAHITI.COM trademark and that Respondent’s
domain name simply replaces the generic top-level domain (“gTLD”) “.com” with
the gTLD “.org.”
All of these contentions are in support of
Complainant’s efforts to establish that the domain name in dispute is identical
or confusingly similar to it’s trademark. Additionally, Complainant addresses the
Respondent’s rights and legitimate interests in the disputed domain name and
asserts that it has made a prima facie
case in support of its allegations, and therefore the burden has shifted to the
Respondent to show that Respondent does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).
In further support of Complainants contention that
Respondent has no rights or legitimate interests in the disputed name,
Complainant contends that Respondent is using the <easytahiti.org> domain name to operate a website that
contains advertisements to Complainant’s various competitors as well as to
various non-competing websites.
Morever, Complainant contends that Respondent is not
commonly known by the <easytahiti.org>
domain name or licensed to register names featuring the EASYTAHITI.COM mark, or any derivation thereof.
Complainant also alleges that Respondent’s
registration and use of the disputed domain name is in bad faith in violation
of Policy ¶ 4(a)(iii).
Complainant points out that Respondent is using the <easytahiti.org> domain name to
operate a website that provides links to various websites offering services
that compete with Complainant’s business.
Additionally, with respect to the question of
registration and use in bad faith, Complainant contends that Respondent’s
manner of use of the <easytahiti.org>
domain name will likely lead to confusion among internet users as to
Complainant’s sponsorship of or affiliation with the resulting website.
B. Respondent
Respondent contends that the EASYTAHITI.COM mark is
registered solely for the use in connection with travel services and that
Respondent is operating a free web directory.
On the question of rights and legitimate interests,
Respondent advances the theory that Complainant has failed to allege sufficient
facts to create a prima facie case
for lack of rights or legitimate interests by Respondent as required by Policy
¶ 4(a)(ii).
Respondent’s many allegations advance it’s theory
that the <easytahiti.org>
domain name is comprised entirely of generic terms and therefore where a domain
name is comprised entirely of descriptive and common terms, a Respondent may
establish rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(a)(ii).
Respondent further contends that Respondent’s use of
the disputed domain name in connection with a free web directory is sufficient
to establish rights and legitimate interests under Policy ¶ 4(a)(ii).
On the subject of registration and use in bad faith,
Respondent replies to Complainant’s allegations that Complainant failed to meet
its burden of proof of bad faith and registration and use under Policy ¶ 4(a)(iii).
Respondent’s allegations further contend that it has
rights and legitimate interests in the <easytahiti.org>
domain name pursuant to Policy ¶ 4(a)(ii) because
Respondent’s domain name is comprised entirely of generic terms. It would therefore have the Panel conclude
that Respondent did not register or use the domain name in bad faith pursuant
to Policy ¶ 4(a)(iii).
It is further asserted by Respondent that its <easytahiti.org> domain name is
comprised entirely of generic terms and that Respondent did not exhibit the
requisite bad faith registration and use of the <easytahiti.org> domain name under Policy ¶ 4(a)(iii) as a
result of its generic composition
FINDINGS
The Panel has concluded that Complainant has established
by a preponderance of the evidence that Respondent’s registration of the <easytahiti.org> name is in
violation of Policy ¶¶ 4(a)(i)-(iii).
DISCUSSION
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.
The Panel finds that
Complainant’s registration of the mark with the French trademark authority is
sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See
Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001)
(finding that the Policy does not require that the mark be registered in the
country in which the respondent operates; therefore it is sufficient that the
complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO
Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.”).
The Panel also finds
replacing one gTLD for another gTLD is not a sufficient means of
differentiating Respondent’s domain name from Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See Koninklijke Philips Elecs. NV
v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> is identical to the complainant’s PHILIPS mark); see also Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to the complainant’s mark).
The Panel finds that the
burden of proof has shifted on this issue, the Complainant having established a
prima facie case in support of its
allegations and Respondent now must show that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 221, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
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 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). The Panel finds that Respondent has failed to
discharge its burden of proof in this respect.
From the evidence the Panel
infers from Respondent’s use that Respondent is receiving click-through fees
for each internet user redirected to a commercial website unrelated to
Complainant, all as alleged by Complainant and supported by its evidence. The Panel further finds that the Respondent
is not using the easy <easytahiti.org>
domain name in connection with 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
ALPITOUR S.p.A. v. Ali Albloushit, FA 888651 (Nat. Arb. Forum Feb. 26,
2007) (rejecting the respondent’s contention of rights and legitimate interests
in the <bravoclub.com> domain name as the respondent is merely using the
domain name to operate a website containing links to various competing
commercial websites, which 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 also Meyerson v. Speedy Web, FA
960409 (Nat. Arb. Forum May 5, 2007) (finding that where a respondent has
failed to offer any goods or services on its website other than links to a
variety of third party websites is not a use in connection with a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that
Respondent is profiting from its use of the <easytahiti.org> domain name to operate a website that
provides links to various websites offering services that compete with
Complainant’s business. As such, this
use constitutes a disruption of Complainant’s business and is therefore
evidence of bad faith, registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc. FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO) Dec. 15, 2000) (finding that the
respondent registered and used the domain name to promote competing auction
sites). The Panel finds, as Complainant
contends, that Respondent’s manner of the use of the <easytahiti.org> domain name will likely lead to confusion
among internet users as to Complainant’s sponsorship of or affiliation with the
resulting website. The Panel therefore
concludes that such use is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and
use of a domain name that incorporates another’s mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also 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).
DECISION
Having established all three
elements required under the ICANN Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered
that the <easytahiti.org>
domain name be TRANSFERRED from
Respondent to Complainant.
Robert T. Pfeuffer, Senior
District Judge, Panelist
Dated: April 4, 2008
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