Priceline.com, Inc. v. Aloha Hawaiian Vacations
Claim Number: FA1111001416325
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Aloha Hawaiian Vacations (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <prieeline.com>, <pricsline.com>, <pricellne.com>, <pricdline.com>, and <priccline.com>, registered with Wild West Domains, 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.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the National Arbitration Forum received payment on November 18, 2011.
On November 22, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <prieeline.com>, <pricsline.com>, <pricellne.com>, <pricdline.com>, and <priccline.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On November 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2011 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@prieeline.com, postmaster@pricsline.com, postmaster@pricellne.com, postmaster@pricdline.com, and postmaster@priccline.com. Also on November 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
An e-mail was received from Respondent on December 12, 2011. The Forum notified by Respondent by email on December 13, 2011 that Respondent's email was not a sufficient Response under Rule 5 and Supplemental Rule and invited Respondent to file a sufficient Response. Respondent not having done so, the Forum has treated the e-mail as an incomplete Response.
On December 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of numerous federal trademark registrations in the United States that consist of or include the word PRICELINE (the "Mark").
These include:
[i.] PRICELINE for travel agency services, namely, providing and relaying information and securing payment in connection with transportation reservations and bookings by means of a computer network, a global computer network, by mail, courier, telephone and facsimile, including creating, maintaining and providing access to an electronic data base and printing and issuing tickets (U.S. Reg. No. 2,272,659);
[ii.] PRICELINE.COM for travel agency services, namely, making reservations and bookings for transportation; providing information in connection with transportation bookings by electronic means, namely, via a computer, by [mail, courier,] telephone [and facsimile] (U.S. Reg. No. 2,481,112);
[iii.] PRICELINE.COM for providing information in connection with mortgages and related financial services, and enabling customers to apply for mortgages and obtain mortgage information from mortgage providers by means of a global computer network, mail and telephone (U.S. Reg. No. 2,481,752).
Complainant provides online travel services in 23 languages in over 60 countries in Europe, North America, Asia, the Middle East and Africa. Priceline.com launched in 1998 and receives over 16 million visitors each month. Complainant reported revenues of over $1.9B from its operations in 2008 and is a publicly traded company listed on the NASDAQ under the symbol PCLN. Complainant enjoys wide consumer recognition and acceptance of its Mark.
The Disputed Domain Names are confusingly similar to the Mark because they differ by only a single character from the Mark, or because they differ by only the juxtaposition of two characters when compared to the Mark. For clarification, the Disputed Domain Names contain either:
[i.] the addition of one extra character, or ...
[ii.] the removal of one character, or ...
[iii.] one character which is incorrect, or ...
[iv.] two juxtaposed characters
as compared to the Mark.
The Disputed Domain Names are, simply put, a classic example of "typosquatting."
Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons:
Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Names fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the disputed domain name;
Respondent is using (some or all of) the Disputed Domain Names to redirect Internet users to a website operated by Complainant's competitors. Presumably, Respondent receives consideration from those firms for driving traffic to them. As such, Respondent is not using the domain name(s) to provide a bona fide offering of goods or services as allowed under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶4(c)(iii). Furthermore, Respondent is causing confusion amongst consumers and tarnishing Complainant's good name in the marketplace;
The earliest date on which Respondent registered the Disputed Domain Names was June 12, 2003 that is significantly after Complainant's first uses in commerce of its various forms of the Mark, on November 16, 1998, August 24, 1999 and June 19, 1997.
The Disputed Domain Names should be considered as having been registered and being used in bad faith for the following reasons:
Respondent's typosquatting behavior is, in and of itself, evidence of bad faith;
Respondent holds registrations on other domain names (<EckPedia.com>, <TtavelOsiTy.com>) that appear to be straightforward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent.
Respondent is using the Disputed Domain Names to redirect Internet users to a website featuring products/ services in direct competition with Complainant. The Panel should presume that Respondent benefits commercially when consumers purchase products from the website that resolves from the Disputed Domain Names. Respondent is therefore capitalizing on the likelihood that consumers will confuse the source of the Disputed Domain Names as being affiliated with Complainant.
B. Respondent
The five domains that are being questioned were purchased in 2003 with the intent of potential clients misunderstanding a domain name which I was hoping to purchase at that time: <pricelion.com> however it was not for sale and the project got delayed, and I became busy with the many businesses which I have.
Since I was unable to purchase <pricelion.com>, I discontinued pursuit of developing the travel website I had in mind at that time. The domain names in question were accidentally forwarded to my son's d/b/a business AAAA Aloha! by my daughter. My daughter renews our family's domain names each year, and I forgot about this until receiving the email from [the Forum].
Now that I have been reminded of this forgotten project (thank you very much for reminding me) I have now just purchased the domain name <price-lion.com> and will soon begin my new website under this name. Therefore, I plan to keep the five domain names in question. Please unlock these domain names as soon as possible so I can correctly forward them to my new upcoming website.
Admissibility
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
The Panel gives weight only to those admissible factual contentions that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under Paragraph 10(d) of the Rules.
In this case, Complainant has provided the required ¶ 3(b)(xiv) certification and additional documents and declarations. The Panel thus finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has failed to provide the required ¶ 5(c)(vii) certification or any other documents, affidavits, or declarations supporting its contentions. In most cases like this, the Panel would find none of the factual contentions made by Respondent to be admissible. But in this case, Respondent has made admissions against interest that will be taken at its word by the Panel.
Policy
Complainant has established trademark rights in the Mark. The disputed domain names are confusing similar to the Mark. Respondent has not established that it has legitimate rights to or interest in the disputed domain names. Respondent's adoption and use of the disputed domain names has been in bad faith.
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."
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 finds that Complainant's U.S. Trademark Registration Nos. 2,272,659, 2,481,112, and 2,481,752 establish Complainant’s rights in the Mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).
The Panel finds that the disputed domain names are confusingly similar to the Mark. Exchanging one letter in a domain name does not distinguish that domain name from the Mark, where the exchange is an obvious misspelling and the overall impression to the viewer remains the same. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
The Panel finds that Complainant has carried its burden of proof under ¶ 4(a)(i) of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
The Panel finds that Complainant has made such a prima facie showing.
Complainant's rights under its U.S. Trademark Registrations cover online travel services. Respondent admits in its incomplete Response that the disputed domain names were intended to be used in conjunction with travel services. And, the web site of Respondent submitted by Complainant using the domain name <11aloha.com>, to which the disputed domain names redirect, promotes online travel services including lodging, rental car, tourist information, shopping, and tours.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Policy ¶ 4(a)(ii):
(I) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not and cannot demonstrate the existence of any of these circumstances.
Respondent is known as Aloha Hawaiian Vacations through use of that term as its business name and as its service mark on its web site.
Respondent also uses the domain names to divert travel services from Complainant to Respondent. Such diversion is neither a bona fide nor a legitimate noncommercial use of the disputed domain names. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was using the name in connection with neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The disputed domain names contain apparent and obvious misspellings of the Mark. This fact is also evidence of Respondent's lack of rights or legitimate interests in the domain names. 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 IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Complainant has carried its burden of proof under ¶ 4(a)(ii) of the Policy.
The circumstances of Paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy ¶ 4(a)(iii) can be established.
Paragraph 4(b) reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy ¶ 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.
Lack of rights or legitimate interests under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
Proof of Policy ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
To the Panel, the most telling evidence of Respondent's bad faith is in its Response. Respondent states that its initial intent was to use the domain name <pricelion.com> for travel services. Because such domain name was unavailable, Respondent lost interest in the disputed domain names. Respondent has now registered the domain name <price-lion.com>, and intends to use the disputed domain names to direct business to a web site using the domain name <pricelion.com>.
In the Panel's view, both the domain names <pricelion.com> and the domain name <price-lion.com> are confusingly similar to the Mark, being other examples of an obvious misspelling of the Mark that creates the same impression as the Mark. In the Panel's view, Respondent cannot establish rights or legitimate interest in those domain names, given Respondent's intent to use them in conjunction with travel services. In the Panel's view, the use and registration of both names on the part of Respondent would be in bad faith, given the intended use in conjunction with travel services and the obvious misspelling.
Respondent's statement that it intended and intends to use the disputed domain names to direct business to its web sites (that use the domain names <pricelion.com> and <price-lion.com>) is a powerful admission that it registered and used, and will use, the disputed domain names in bad faith.
Even if the Panel does not consider Respondent's admissions against interest, the facts still weigh heavily in favor of a finding of bad faith.
In addition to the disputed domain names involved in this proceeding, Respondent previously registered the domain names that contained misspelled versions of third-party trademarks, e.g., <EckPedia.com> (similar to the mark EXPEDIA) and <TtavelOsiTy.com> (similar to the mark TRAVELOCITY). The registration of multiple domain names featuring another’s mark is evidence that the respondent registered and used the domain names in bad faith. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Operation by Respondent of a competing web site is also evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent's operation of a competing website is evidence of Respondent's bad faith by its attempt to commercially benefit by creating confusion. See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Typosquatting also is evidence of bad faith registration and use. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003).
The Panel finds that Complainant has carried its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prieeline.com>, <pricsline.com>, <pricellne.com>, <pricdline.com>, and <priccline.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: January 5, 2012
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