Travelzoo Inc. v. Viper a/k/a Slavik
Viner
Claim Number: FA0208000117866
PARTIES
Complainant
is Travelzoo Inc., Mountain View, CA
(“Complainant”) represented by Ralph
Bartel. Respondent is Slavik Viner, San Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <travelzo.com>,
registered with Register.com.
PANEL
The
undersigned certifies that he as acted independently and impartially and to the
best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 2, 2002; the Forum received a hard copy of the
Complaint on August 5, 2002.
On
August 5, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <travelzo.com> is
registered with Register.com and that Respondent is the current registrant of
the name. Register.com has verified
that Respondent is bound by the Register.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
August 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 28,
2002 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@travelzo.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 16, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
contentions:
1. Respondent’s <travelzo.com> domain
name is confusingly similar to Complainant’s registered TRAVEL ZOO mark.
2. Respondent does not have rights or
legitimate interests in the <travelzo.com> domain name.
3. Respondent registered and used the <travelzo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is one of the world’s leading
providers of online travel-related news, information and services.
Complainant holds a registered trademark
with the U.S. Patent and Trademark Office (“USPTO”) for the TRAVELZOO mark
(Reg. No. 2,422,810) denoting, inter alia, the promotion of goods and
services of others for travel purposes. Complainant’s TRAVELZOO mark was
registered with the USPTO on January 23, 2001 and is listed on the Principal
Register; first use is listed as January 26, 1998. Complainant also asserts
rights in the TRAVELZOO.COM service mark, used for “providing information and
news in the field of travel via an online global communications network.”
Complainant’s TRAVELZOO mark has
extensive business contacts and relationships with over 180 “travel supplier
clients” including, Hilton, Hertz, Virgin Airlines, Marriott, and
Travelocity.com, among others. According to Complainant’s Submission, a polling
entity operating under the Media Metrix business name placed Complainant’s
<travelzoo.com> website among the top fifteen most visited travel-related
websites. Complainant further asserts, “In one of the largest e-commerce
studies ever conducted, netsurfers ranked TRAVELZOO.COM #1 among twenty-five
leading travel websites.”
Because of Complainant’s continuous and
widespread use of the TRAVELZOO mark in connection with its travel-related
services, Complainant’s TRAVELZOO mark has gained significant consumer
recognition as identifying Complainant’s quality services.
Respondent registered the <travelzo.com>
domain name on November 17, 2000. Complainant’s investigation of
Respondent’s activities indicates that the subject domain name resolves to a
website that offers travel-related services. Respondent’s attached website
contains the following links: “Travel,” “Last Minute Travel,” “Travel Deal,”
and “Air Travel.”
DISCUSSION
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 the 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.
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; and
(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.
Although Complainant presently holds a
trademark registration for its TRAVELZOO mark (registered on January 23, 2001),
for the purposes of this proceeding, it is necessary to establish rights in the
mark prior to Respondent’s registration of the domain name on November 17,
2000. Complainant’s Submission contains a significant amount of information
that supports a finding of rights in the TRAVELZOO mark since the date of first
use, specified as January 26, 1998 by the USPTO.
For almost four years, Complainant has
been continuously engaged in the marketing, advertising and sale of high
quality travel information and news, marketing all its services and products
under the TRAVELZOO mark. Complainant has expended a substantial amount of
resources, money, time and effort promoting, marketing, advertising and
building consumer recognition and goodwill in its TRAVELZOO mark and
corresponding domain name. Complainant’s initial developmental efforts have
been an effective investment; its <travelzoo.com> website is visited by
4.2 million Internet users per month. The USPTO’s subsequent registration of
Complainant’s TRAVELZOO mark may not constitute prima facie evidence of
rights in the mark for the purpose of this proceeding, however, it reinforces
Complainant’s assertion of rights in the mark prior to registration. The Panel
finds that Complainant has provided significant evidence that supports the
finding of rights in the mark prior to Respondent’s registration of the <travelzo.com>
domain name. The ICANN dispute resolution policy is “broad in scope” in that
“the reference to a trademark or service mark ‘in which the complainant has
rights’ means that ownership of a registered mark is not required–unregistered
or common law trademark or service mark rights will suffice” to support a
domain name Complaint under the policy. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4
(2000).
Respondent’s <travelzo.com> domain
name is confusingly similar to Complainant’s TRAVELZOO mark. Respondent’s
domain name is nearly identical to Complainant’s mark, except a slight
typographical error. Respondent’s mark incorporates Complainant’s TRAVELZOO
mark in its entirety, but contains the deletion of the letter “o.” Precedent
has determined that the deliberate introduction of errors or insignificant
changes, such as the addition or deletion of a letter, does not change
Respondent’s infringement on a trademark holder’s rights. See Compaq Info.
Techs. Group, L.P. v. Seocho , FA
103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also American
Airlines Inc. v. Data Art Corp.,
FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com>
"effectively identical and certainly confusingly similar" to
Complainant's AMERICAN AIRLINES registered marks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has presented a prima
facie case before the Panel, comprised of evidence supporting its
assertions and inferences. Because Respondent did not submit a Response in this
proceeding, it has failed to propose any set of circumstances that would
suggest it has rights or interests in the <travelzo.com> domain
name under Policy ¶ 4(a)(ii). Complainant’s assertions have gone unopposed and
unrefuted. Therefore, it is proper for the Panel to accept all reasonable
inferences made by Complainant as true. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
As stated, Respondent’s <travelzo.com>
domain name resolves to a website that offers travel-related services, and
competes with Complainant’s <travelzoo.com> website and
corresponding services. Circumstances indicate that Respondent is engaged in a
practice called typosquatting, whereby a registrant seeks to register slight
variations of marks in order to capitalize on diverting unsuspecting Internet
users to a confusingly similar domain name. Respondent has opportunistically
taken advantage of Complainant’s TRAVELZOO mark by creating a website,
dedicated to the same field of interest, that is perceived to be affiliated
with Complainant’s reputable business. Such use is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it constitute a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because Respondent's sole purpose in selecting the domain names was to
cause confusion with Complainant's website and marks, it's use of the names was
not in connection with the offering of goods or services or any other fair
use).
There is no information
before this Panel, nor has Respondent submitted any evidence, that would
suggest Respondent is commonly known by the <travelzo.com> domain
name pursuant to Policy ¶ 4(c)(ii). In fact, Respondent represents itself as
“Viper” in the domain name registration agreement, which has no apparent
connection with the “travelzo” second-level domain. Complainant’s investigation
of Respondent failed to produce any legitimate trademarks, service marks or
other intellectual property rights that would signify rights or legitimate
interests in the subject domain name. See Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA
95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or
legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Respondent’s registration of the
infringing domain name represents the practice of typosquatting. Complainant’s
Submission contains uncontested assertions that Respondent intentionally
registered the domain name despite knowledge of Complainant’s rights in the
TRAVELZOO mark. It is proper to infer bad faith registration when a Respondent
intentionally registers a domain name he knows to be confusingly similar to
another’s mark. See e.g. Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding
<hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see
also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com>
and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to
Complainant); see also See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
Respondent’s bad faith use of the <travelzo.com>
domain name is illustrated by its diversionary use and opportunistic
character. As stated, Respondent’s behavior exhibits qualities specific to the
practice of typosquatting. Typosquatting, by definition, constitutes bad faith
use, as it is the opportunistic registration of a variation of an established
mark in a domain name for the purpose of profiting from the confusion that
results. Furthermore, Respondent is disrupting Complainant’s business by
competing in the same industry while using a variation of Complainant’s
TRAVELZOO mark to perpetuate consumer interest. Such use of the domain name
constitutes bad faith use pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements of
the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <travelzo.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 18, 2002
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