CheapCaribbean.com, Inc. v. Dealwave
Claim Number: FA1205001444419
Complainant is CheapCaribbean.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dealwave (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com>, registered with Fabulous.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2012; the National Arbitration Forum received payment on May 16, 2012.
On May 16, 2012, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2012 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@cheapcaribbea.com, postmaster@cheapcaribbbean.com, postmaster@cheaparibbean.com, postmaster@cheacaribbean.com, and postmaster@ceapcaribbean.com. Also on May 17, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant provides online and telephone resort vacation packages and reservations to destinations in the Caribbean and Mexico. Complainant began offering its services under the CHEAPCARIBBEAN.COM mark in December 2000.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CHEAPCARIBBEAN.COM mark (Reg. No. 3,316,639 filed February 7, 2007; registered October 23, 2007).
Complainant has generated $100,000,000 in revenue since 2000 and Complainant registered the <cheapcaribbean.com> domain name on March 28, 2001.
A past UDRP panel found that Complainant owns common law rights in its CHEAPCARIBBEAN.COM mark dating back to December 10, 2000.
Respondent’s <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> domain names are confusingly similar to Complainant’s mark.
Respondent is not commonly known by the disputed domain name based on the WHOIS information and lack of authorization from Complainant to use the CHEAPCARIBBEAN.COM mark.
Respondent uses the disputed domain names to resolve to websites featuring generic links to third-party websites, some of which directly compete with Complainant.
Respondent is attempting to commercially benefit from the hyperlinks found at the resolving website.
Respondent has been a respondent in prior UDRP cases in which the panels ordered the transfer of the disputed domain names to the respective complainants.
Respondent also registered other domain names that contain the marks of third parties.
All the Disputed Domain Name(s) are a classic example of "typosquatting." Respondent’s typosquatting behavior is evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark rights in its CHEAPCARIBBEAN.COM mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,316,639 filed February 7, 2007; registered October 23, 2007). Complainant demonstrates that it had common law trademark rights in CHEAPCARIBBEAN.COM mark dating back to December 10, 2000.
The earliest date Respondent registered any of the at-issue domain names was August 24, 2005.
Respondent has been a respondent in prior UDRP cases in which the panels ordered the transfer of the disputed domain names to the respective complainants.
Respondent has registered other domain names that contain the marks of third parties.
Respondent used the disputed domain names to resolve to websites featuring generic links to third-party websites, some of which directly compete with Complainant.
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.
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.”).
The at-issue domain names are each confusingly similar to a mark in which Complainant has trademark rights.
Complainant owns a trademark registration with the USPTO for its CHEAPCARIBBEAN.COM mark (Reg. No. 3,316,639 filed February 7, 2007; registered October 23, 2007). Registration with the USPTO at or before the time of the commencement of a UDRP proceeding sufficiently demonstrates Complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> domain names all contain misspelled versions of Complainant’s CHEAPCARIBBEAN.COM mark. Each domain name differs from Complainant’s mark by either the removal of a letter or the addition of a letter. Such minor changes to Complainant’s mark are insufficient to distinguish the at-issue domain names from Complainant’s CHEAPCARIBBEAN.COM mark for the purposes of Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).
As a threshold consideration before proceeding to the Panel’s discussion of Policy ¶¶4(a),4(a)(ii) the Panel notes that while a finding of trademark rights for the purpose of Policy ¶4(a)(i) only necessitates finding such rights at the time the UDRP proceedings commenced it is well settled, with few exceptions, that with regard to Policy ¶¶4(a),4(a)(ii) a complainant must have had rights in a relevant trademark prior to the at-issue domain name’s registration date. It is axiomatic that if a domain name was registered before the complainant had any rights in an identical or confusingly similar mark, the respondent cannot be found to have lacked rights or interests in respect of such domain name, or be found to have registered the domain name in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (June 12, 2012). Based on Complaint’s undisputed submissions and with deference to a previous UDRP decision regarding Complainant’s CHEAPCARIBBEAN.COM trademark, the Panel concludes that Complainant has demonstrated that it possessed common law trademark rights in CHEAPCARIBBEAN.COM prior to each of the at-issue domain names’ registration. See CheapCaribbean.com, Inc. v. Belroots Pty Ltd c/o Luis de Carvalho a/k/a Chin-Hui Wu c/o Chin-Hui Wu a/k/a Domain Administrator a/k/a ZincFusion Limited c/o Vivian Cox, NAF Claim No. FA337668 (Nat. Arb. Forum) Sept. 12, 2010 (Finding common law rights and secondary meaning in CHEAPCARIBBEAN.COM when Complainant provided online travel and telephone resort vacation packages in the Caribbean and Mexico, had generated $100,000,000 in revenue since 2000, owned the <cheapcaribbean.com> domain name, and registered the domain name on December 11, 2000). Even if Respondent lacked trademark rights at the time it registered the domain names “it is clear that the aim of the registration[s] was to take advantage of the confusion between the domain name[s] and any potential [C]omplainant rights.” See supra, WIPO Overview.
Respondent lacks rights and legitimate interests in respect of each of the at-issue domain names.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain names then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). There is nothing in the record that supports a contrary finding. Indeed, WHOIS information identifies the registrant of the disputed domain names as “Dealwave.” Moreover, Respondent is not sponsored by, or legitimately affiliated with Complainant; and Complainant did not grant Respondent permission to use its mark in the disputed domain names. See 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).
Respondent uses the disputed domain names to resolve to websites featuring generic links to third-party websites, some of which directly compete with Complainant. The websites contain hyperlinks entitled “Caribbean Vacations,” “Caribbean Cruise,” “Vacation Deals,” “Mexico Vacation,” and “Caribbean Travel,” among others. It is more likely than not that Respondent commercially benefits from these hyperlinks by receiving pay-per-click fees. Based on this evidence, the Panel concludes that Respondent is neither making a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and interests in respect of each of the disputed domains name pursuant to Policy ¶4(a)(ii).
Respondent registered and used each of the at-issue domain names in bad faith.
Respondent has been a respondent in prior UDRP cases in which the panels ordered the transfer of the at-issue domain names to the respective complainants. See Novartis AG v. Dealwave, FA 1419767 (Nat. Arb. Forum Jan. 27, 2012); see also Meadowbrook LLC v. Dealwave, FA 1312200 (Nat. Arb. Forum Apr. 22, 2010); see also Allstate Ins. Co. v. Dealwave, FA 1375193 (Nat. Arb. Forum Apr. 14, 2011). Respondent also registered other domain names that contain the marks of third parties. The Respondent’s previous UDRP decisions are evidence that Respondent’s registration and use of the <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> domain names is a part of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Additionally, Respondent registered and uses the disputed domain names with the intention of commercially benefiting from the hyperlinks found on the referenced websites. Respondent wants to create confusion between the Complainant’s mark and the domain names and thereby profit from that confusion through the use of the <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> reference websites that it controls. These circumstances illustrate bad faith under Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, there is no doubt that Respondent is typosquatting. Each domain name is a common misspelling of Complainant’s trademark. Such behavior is compelling evidence of Respondent’s bad faith registration and use of the <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> domain names under Policy ¶ 4(a)(iii). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapcaribbea.com>, <cheapcaribbbean.com>, <cheaparibbean.com>, <cheacaribbean.com>, and <ceapcaribbean.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 12, 2012
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