Travelocity.com LP v. Nadeem Qadir a/k/a Tan Kim Fong
Claim Number: FA1009001347880
Complainant is Travelocity.com LP ("Complainant"), represented by CitizenHawk, Inc., California, USA. Respondent is Nadeem Qadir a/k/a Tan Kim Fong ("Respondent"), Malaysia and Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <travelecity.com> and <travelocityl.com>, registered with DotRegistrar.com.
The domain name at issue is <treavelocity.com>, registered with eNom, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2010; the National Arbitration Forum received payment on September 22, 2010.
On September 23, 2010, DotRegistar.com confirmed by e-mail to the National Arbitration Forum that the <travelecity.com> and <travelocityl.com> domain names are registered with DotRegistar.com and that Respondent is the current registrant of the names. DotRegistar.com has verified that Respondent is bound by the DotRegistar.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <treavelocity.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@treavelocity.com, postmaster@travelecity.com, and postmaster@travelocityl.com. Also on September 28, 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 November 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <treavelocity.com>, <travelecity.com>, and <travelocityl.com> domain names are confusingly similar to Complainant’s TRAVELOCITY mark.
2. Respondent does not have any rights or legitimate interests in the <treavelocity.com>, <travelecity.com>, and <travelocityl.com> domain names.
3. Respondent registered and used the <treavelocity.com>, <travelecity.com>, and <travelocityl.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Travelocity.com LP, started business in 1996 and uses its TRAVELOCITY mark in connection with travel related services provided via the Internet. Complainant holds a trademark registration for its TRAVELOCITY mark with United States Patent and Trademark Office (e.g. Reg. No. 2,254,700 issued June 22, 1999). Complainant also holds a trademark registration with the USPTO for its TRAVELOCITY.COM mark (e.g. Reg. No. 2,466,132 issued July 3, 2001).
Respondent, Nadeem Qadir a/k/a Tan Kim Fong, registered the disputed domain names <travelocityl.com> on May 11, 2002, <travelecity.com> on April 16, 2002, and <treavelocity.com> on October 26, 2000. The disputed domain names resolve to a website featuring links to third-party websites, some of which directly compete with Complainant’s online travel business.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that a prior UDRP decision has already established that Dong Wang and Tan Kim Fong are aliases for a single entity. See Microsoft Corporation v. Tan Kim Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Gadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com’s WHOIS database is p a/k/a Registrate Co. a/k/a Cosmosl, NAF FA0906001235720 (July 14, 2009). Complainant contends that the domain name <treavelocity.com> is registered to Nadeem Qadir using the administrative email tankim@ownbox.com. The domain names <travelecity.com> and <travelocityl.com> are registered to Tan Kim Fong using the same administrative email address tankim@ownbox.com as noted above. Respondent has also caused the disputed domain names to redirect to the same parking website <usseek.com>. The forwarding function can be observed through the use of an HTTP viewer. Using this function, it is important to note that the domain name <treavelocity.com> redirects using <ownbox.com> at the IP Address 216.65.41.185. The domain names <travelecity.com> and <travelocityl.com> also redirect using <ownbox.com> at the IP Address 216.65.41.182. Additionally, Complainant contends that the IP Address for the redirects reside on the same subnet; 216.65.41.190 for <treavelocity.com> and 216.65.41.182 for <travelecity.com> and <travelocityl.com>. Therefore, the Panel finds that the disputed domain names are controlled by the same person and/or entity, which is operating under several aliases.
Complainant contends it has established rights in the TRAVELOCITY and TRAVELOCITY.COM marks. Previous panels have found that trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Previous panels have also found that a complainant is not required to register its mark within the country of respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant holds a trademark registration for its TRAVELOCITY MARK (e.g. Reg. No. 2,254,700 issued June 22, 1999) and for its TRAVELOCITY.COM mark (e.g. Reg. No. 2,466,132 issued July 3, 2001) with the USPTO. Therefore, the Panel finds Complainant has established rights in the TRAVELOCITY and TRAVELOCITY.COM marks through Complainant’s trademark registration with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s TRAVELOCITY mark. The disputed domain names differ from Complainant’s mark either by the addition of a single letter or by replacing a letter with another letter and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition, or the replacement, of a single letter fails to properly distinguish the disputed domain names from Complainant’s marks. See Reuters Ltd. v. Global Net 2000, Inc. Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also finds that the addition of a gTLD fails to properly distinguish the disputed domain names from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s TRAVELOCITY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant establishes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names. Complainant argues that Respondent has not presented any evidence that would support a finding that Respondent is commonly known by the domain names. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain names. The WHOIS information does not appear to be similar to the disputed domain names. Complainant asserts that it has not authorized or licensed Respondent to use or register the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent uses the disputed domain names to resolve to a directory website featuring links to third-party websites of Complainant’s competitors in the travel industry. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of confusingly similar disputed domain names to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(ii). See 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does 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)).
Respondent’s disputed domain names contain Complainant’s mark while only adding or misspelling one letter to make a typographical error. Complainant asserts that the typographical error in the disputed domain names capitalizes on Internet users making common typing errors by redirecting users to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain names is evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); 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 that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolves to a website featuring a directory of links, some of which resolve to Complainant’s competitors in the travel industry. Complainant alleges that Respondent’s use of the disputed domain names disrupts its business because Internet users intending to use Complainant’s online travel services may use the same services from a competitor as a result of Respondent’s use of the disputed domain names. The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s business, which constitutes 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 a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees from the previously mentioned links. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain names, resolving websites, and featured links. Respondent attempts to profit off this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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).”); 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).
Respondent’s disputed domain names includes Complainant’s mark while only adding or misspelling one letter to make a typographical error. Complainant argues that the typographical error in the disputed domain names capitalizes on Internet users making common typing errors by redirecting users to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Panel finds the element of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <treavelocity.com>, <travelecity.com>, and <travelocityl.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 10, 2010
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