TRAVELHOST, Inc. v. Bill Soistmann
Claim Number: FA0906001265785
Complainant is TRAVELHOST,
Inc. (“Complainant”), represented by John
A.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <itravelhost.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 2, 2009.
On June 1, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <itravelhost.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 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@itravelhost.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 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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 <itravelhost.com> domain name is confusingly similar to Complainant’s TRAVELHOST mark.
2. Respondent does not have any rights or legitimate interests in the <itravelhost.com> domain name.
3. Respondent registered and used the <itravelhost.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TRAVELHOST, Inc., is the owner of the TRAVELHOST mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,092,284 issued May 30, 1978). Complainant uses its TRAVELHOST mark in connection with travel and tour agency services.
Respondent registered the <itravelhost.com> domain name on February 16, 2005. The disputed domain name resolves to a website displaying the message, “Sorry! This site is not currently available.”
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 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.
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i) based on the registration of its TRAVELHOST mark with the USPTO.
Complainant alleges that Respondent’s <itravelhost.com> domain name is confusingly similar to its TRAVELHOST mark. The disputed domain name incorporates Complainant’s TRAVELHOST mark in its entirety with the addition of the letter “i” and the affixation of the generic top-level domain (“gTLD”) “.com.” The addition of the letter “i” is a popular prefix, often added to words to reference a connection with the Internet. However, the Panel finds that the mere addition of the letter “i” does not remove Respondent’s <itravelhost.com> domain name from the realm of confusing similarity in relation to Complainant’s TRAVELHOST mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Stanford Asset Mgmt., FA 97257 (Nat. Arb. Forum June 19, 2001) (“The addition of the letter “i” to the Complainant’s BLOOMBERG mark makes the <ibloomberg.com> domain name confusingly similar.”); see also Apple Corps. Ltd. v. Gods-Domains.com, FA 98464 (Nat. Arb. Forum Sept. 25, 2001) (finding that the respondent’s <i-beatles.com> domain name was confusingly similar to the complainants BEATLES mark because “[i]t has been repeatedly held that minor alterations and additions are not likely to eliminate confusion.”). Additionally, the affixation of the gTLD “.com” is irrelevant under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <itravelhost.com> domain name is confusingly similar to Complainant’s TRAVELHOST mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
For the purposes of a Policy ¶ 4(a)(ii) analysis, corresponding to the factors listed in Policy ¶ 4(c), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has done so in these proceedings. Once Complainant satisfies this burden, Respondent then has the burden to show that it has relevant rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). In the present proceedings, Respondent has failed to respond to Complainant’s allegations. The Panel may infer from this failure that Respondent lacks any rights or legitimate interests in the <itravelhost.com> 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel now chooses to review the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The disputed domain name is not being used to resolve to an active website. The <itravelhost.com> domain name’s resolving website displays the message, “Sorry! This site is not currently available.” Complainant alleges that the failure to make demonstrable preparations to use the disputed domain name as an active website suggests that Respondent lacks rights and legitimate interests in the <itravelhost.com> domain name. Additionally, Respondent told Complainant that he did not intend to use the disputed domain name. Thus, the Panel finds that Respondent has not used or made any demonstrable preparations to use the disputed domain name in connection with 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant alleges that Respondent is not commonly known by the <itravelhost.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information provided lists the registrant as “Bill Soistmann,” which suggests that Respondent is not commonly known by the <itravelhost.com> domain name. There is no evidence in the record to the contrary and Respondent has failed to respond to the allegations against it. The Panel thus concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Complainant contends that Respondent’s willingness to sell the <itravelhost.com> domain name to Complainant for more than its out-of-pocket costs provides additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent would not accept Complainant’s offer that was proportionate to the expenses Respondent might have incurred, and insisted on an offer to sell the disputed domain name for $5,000.00. Complainant alleges that Respondent renewed the registration for the disputed domain name with the sole intent of selling it to Complainant for more than its out-of-pocket costs associated with registration. The Panel finds that this serves as evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s willingness to sell the
disputed domain name for an amount in excess of the registration costs
demonstrates a primary intent to sell the disputed domain name, and therefore
evidences Respondent’s bad faith registration and use under Policy ¶
4(b)(i). See Dollar Rent A Car Sys.,
Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the
respondent demonstrated bad faith by registering the domain name with the
intent to transfer it to the complainant for $3,000, an amount in excess of its
out of pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated
in communication with the complainant that it would be ready to sell the
<matmut.com> domain name registration for $10,000).
Complainant alleges that Respondent’s failure to make an
active use of the <itravelhost.com> domain name is evidence of bad
faith registration and use under Policy ¶ 4(a)(iii). Respondent failed to make an active use of
the disputed domain name and explicitly told Complainant that it did not plan
on using the domain name. The Panel
finds that such conduct permits the inference of registration and use in bad
faith under Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that the respondent’s [failure to make an active use] of the domain name
satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Pirelli & C.
S.p.A. v.
Complainant
contends that Respondent has renewed its registration for the <itravelhost.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Complainant alleges that Respondent was well
aware of the dispute over the domain name, saw an opportunity to capitalize on
the disputed domain name, and renewed its registration with the intent to sell
the disputed domain name to Complainant.
The Panel finds that under the Policy, “registration” includes the
renewal of a previous domain name. Thus
Respondent had actual knowledge of Complainant’s right in the mark at the time
of registration. Respondent’s conduct
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Schmidheiny v. Weber, 319 F.3d 581, 583 (3rd Cir. 2003) (holding that
the “registration” of a domain name for
the purposes of the Anti-cybersquatting Consumer Protection Act includes both
the initial registration of the domain name or a subsequent re-registration of
that domain name); see also Houlberg
Dev. v. Adnet Int’l, FA
95698 (Nat. Arb. Forum Oct. 27, 2000) (holding that as the respondent had
actual knowledge of the complainant’s asserted rights in "Retail
Engine" as a trademark before it renewed the domain name, the domain name
was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith); see also Yahoo! Inc. v.
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 <itravelhost.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 23, 2009
National
Arbitration Forum
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