The Travel Channel, L.L.C. v. Gioacchino Zerbo
Claim Number: FA1007001333952
Complainant is The
Travel Channel, L.L.C. (“Complainant”), represented by Halle B. Markus, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwtravelchannel.com>, registered with Fabulous.com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.
On July 8, 2010, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <wwwtravelchannel.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwtravelchannel.com. Also on July 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of a Written Notice, as defined in Rule 1. 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 <wwwtravelchannel.com> domain name is confusingly similar to Complainant’s TRAVEL CHANNEL mark.
2. Respondent does not have any rights or legitimate interests in the <wwwtravelchannel.com> domain name.
3. Respondent registered and used the <wwwtravelchannel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Travel Channel, L.L.C., provides travel-related content in connection with its broadcasting and entertainment services. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TRAVEL CHANNEL and related marks:
THE TRAVEL CHANNEL Reg. No. 1,982,443 issued June 25, 1996;
TRAVEL CHANNEL Reg. No. 2,736,372 issued July 15, 2003;
TRAVEL CHANNEL Reg. No. 2,740,003 issued July 22, 2003;
TRAVEL CHANNEL Reg. No. 2,948,169 issued May 10, 2005;
TRAVEL CHANNEL HD Reg. No. 3,686,637 issued Sept. 22, 2009;
TRAVEL
TRAVEL CHANNEL Reg. No. 3,677,920 issued Sept. 1, 2009.
Respondent, Gioacchino Zerbo, registered the <wwwtravelchannel.com> domain name on May 17, 2003. The disputed domain name resolves to a pay-per-click website that features links to travel information services that compete with Complainant.
Respondent has previously been the respondent in multiple
prior UDRP proceedings in which the disputed domain names were transferred to
the respective complainants. See, e.g.,
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.
Complainant owns multiple trademark registrations with the
USPTO for its TRAVEL CHANNEL and related marks.
The Panel finds that Complainant’s extensive registration of its TRAVEL
CHANNEL mark with the USPTO conclusively proves its rights in the mark
according to Policy ¶ 4(a)(i), regardless of
Respondent’s residence in another country.
See Reebok Int’l Ltd. v.
Complainant alleges that Respondent’s <wwwtravelchannel.com> domain name is
confusingly similar to Complainant’s TRAVEL CHANNEL mark. The only changes the disputed domain name
makes to Complainant’s mark is the elimination of the space between the words
and the additions of the generic top-level domain (“gTLD”) “.com” and the
prefix “www” without the separating period.
The Panel finds that omitting the space between words and adding the
gTLD “.com” do not prevent confusing similarity according to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name and its supporting evidence are sufficient to establish the prima facie case against Respondent required by Policy ¶ 4(a)(ii). Respondent’s failure to respond to Complainant’s Complaint indicates that Respondent has not met its burden in proving its rights or legitimate interests in the disputed domain name. As a result, the Panel finds that Complainant’s allegations are to be viewed as true and that the Panel can accordingly assume that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It allows the Panel to accept all reasonable allegations set forth…as true.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). In an effort to fully examine the situation, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to make an independent determination of whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent lacks rights and legitimate interests because Respondent is not commonly known by the <wwwtravelchannel.com> domain name and is not licensed or authorized by Complainant to use Complainant’s TRAVEL CHANNEL mark in the disputed domain name. Complainant asserts that nothing on the website resolving from the disputed domain name indicates that Respondent is known as “wwwtravelchannel.com” or “travel channel.” The WHOIS information for the disputed domain name also fails to show any nominal association between Respondent and the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name and possesses no rights and legitimate interests 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant argues that Respondent’s <wwwtravelchannel.com> domain name resolves to a directory page filled with pay-per-click links to various third-party travel-related websites in competition with Complainant. The Panel finds that maintaining a pay-per-click website resolving from a disputed domain name that appropriates Complainant’s mark does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant contends that Respondent fails to include the period separating the “www” prefix from the rest of the <wwwtravelchannel.com> domain name in order to take advantage of Complainant’s fame and a common typographical error made by Internet users searching for Complainant. The Panel finds that this attempt to intentionally benefit from Internet users’ typing mistakes constitutes typosquatting, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has previously been the respondent in numerous
prior UDRP proceedings in which the disputed domain names were transferred to
the respective complainants. These UDRP
proceedings are evidence that Respondent has engaged in a pattern of
registering third-party marks in domain names in an effort to prevent the
owners of such marks from reflecting their marks effectively in domain
names. Respondent’s behavior in this
regard shows bad faith registration and use according to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Complainant argues that Respondent’s website resolving from the <wwwtravelchannel.com> domain name advertises links to third-parties who are in competition with Complainant within the travel-related industry. The Panel finds that Respondent’s efforts to divert Internet users intending to reach Complainant disrupt Complainant’s business and thereby indicate bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ (b)(iii)).
Complainant alleges that Respondent’s use of the “www” prefix and Complainant’s mark in the <wwwtravelchannel.com> domain name without the period separating the two portions of the domain name is an attempt to attract unsuspecting Internet users, confuse them, and convert them into profit for Respondent. The presence of pay-per-click links on Respondent’s website gives Respondent the opportunity to financially benefit from redirecting Internet users to Respondent’s resolving websites if the Internet users click on any of Respondent’s displayed links. The Panel finds Respondent’s activities reveal an intent to attract traffic by creating confusion and subsequently profit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent is engaged in the practice of typosquatting through its use of the confusingly similar disputed domain names which constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtravelchannel.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 17, 2010
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