Smarter Travel Media LLC v. James Jacobs
Claim Number: FA0905001263860
Complainant is Smarter
Travel Media LLC (“Complainant”), represented by David J. Byer, of K&L Gates LLP,
REGISTRAR
The domain name at issue is <bookingbuddyhotels.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2009 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@bookingbuddyhotels.com by e-mail.
Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.[1]
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. Respondent’s <bookingbuddyhotels.com> domain name is confusingly similar to Complainant’s BOOKINGBUDDY mark.
2. Respondent does not have any rights or legitimate interests in the <bookingbuddyhotels.com> domain name.
3. Respondent registered and used the <bookingbuddyhotels.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Smarter Travel Media LLC, is the owner of the
BOOKINGBUDDY mark, registered with the United States Patent and Trademark
Office (“USPTO”) (i.e., Reg. No. 3,460,483 issued
Respondent registered the <bookingbuddyhotels.com>
domain name on
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 timely 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 draw such inferences it 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 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.
Complainant has established rights in the BOOKINGBUDDY mark
through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum
Complainant asserts that the <bookingbuddyhotels.com>
domain name is confusingly similar to Complainant’s BOOKINGBUDDY mark under
Policy ¶ 4(a)(i) because the domain name incorporates Complainant’s
BOOKINGBUDDY mark with the addition of the descriptive term “hotels” and the
generic top-level domain “.com.” The
Panel finds that these additions fail to sufficiently distinguish Respondent’s <bookingbuddyhotels.com>
domain name from Complainant’s BOOKINGBUDDY mark. See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb.
Forum
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to Respondent to prove
that it has rights or legitimate interests under Policy ¶ 4(c). In these proceedings, the Panel finds that
Complainant has presented a sufficient prima
facie case. Respondent has failed to
respond to the allegations against it.
Due to Respondent’s failure, the Panel infers that Respondent does not
have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Additionally, Respondent has not offered any evidence and there is no information in the record suggesting that Respondent is commonly known by the <bookingbuddyhotels.com> domain name. The WHOIS information lists the registrant as “James Jacobs,” which suggests that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel concludes that Respondent is not, and has never been, commonly known by the <bookingbuddyhotels.com> domain name under Policy ¶ 4(c)(ii).
Furthermore, Respondent is using the <bookingbuddyhotels.com>
domain name to host a website featuring click-through links which further
resolve to websites of Complainant’s competitors. Respondent is using the disputed domain name
to garner click-through fees through the Expedia Affiliate Program. Respondent’s use of a domain name confusingly
similar to Complainant’s BOOKINGBUDDY mark to commercially benefit, in
violation of the related Expedia Affiliate Program, fails to demonstrate a bona fide offering of goods or services
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively.
See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May
29, 2007) (concluding that the respondent had no rights or legitimate interests
in disputed domain names containing the complainant’s marks even though it was
a part of the complainant’s affiliate program, as the affiliate agreement
expressly stated that affiliates could not register domain names containing the
CRICKET mark); see also Wal-Mart
Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the
respondent’s use of domain names confusingly similar to the complainant’s
WAL-MART mark to divert Internet users seeking the complainant’s goods and
services to websites competing with the complainant did not constitute 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)).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using
the <bookingbuddyhotels.com> domain name to divert Internet
traffic to Respondent’s website to receive click-through fees from
Complainant’s Affiliate Program as well as by diverting Internet users to
Complainant’s competitors. The Panel
presumes that such use is likely disrupting Complainant’s business. Therefore, the Panel concludes that
Respondent has registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Complainant further contends that Respondent is using the <bookingbuddyhotels.com> domain name, which is confusingly similar to Complainant’s BOOKINGBUDDY mark, to take advantage of the Affiliate Program. Complainant alleges that Respondent’s intent to attract Internet users to its domain name for financial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv). The Panel presumes that Respondent is profiting from said scheme through the Affiliate Program and through the generation of click-through fees. See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant has 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 <bookingbuddyhotels.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated:
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National
Arbitration Forum
[1] Respondent submitted a Response after the deadline and not in hard copy format in violation of ICANN Supplemental Rule 5. Nothing in the Response would change the outcome of this Decision.