Orbitz Worldwide, LLC v. Domain Librarian
Claim Number: FA1312001535826
Complainant is Orbitz Worldwide, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Librarian (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orobitz.com>, registered with MONIKER ONLINE SERVICES LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 23, 2013; the National Arbitration Forum received payment December 23, 2013.
On December 27, 2013, MONIKER ONLINE SERVICES LLC confirmed by e-mail to the National Arbitration Forum that the <orobitz.com> domain name is registered with MONIKER ONLINE SERVICES LLC and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES LLC verified that Respondent is bound by the MONIKER ONLINE SERVICES LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2014, 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@orobitz.com. Also on December 30, 2013, 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 January 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
Policy ¶ 4(a)(i): Complainant’s Rights & Confusing Similarity of Domain Name
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
Respondent’s Contentions
Respondent did not submit a response. The Panel observes that Respondent registered the <orobitz.com> domain name August 15, 2002.
Complainant established that it has legal rights in the mark contained in its entirety within the disputed domain name.
The domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent’s conduct in registering and using Complainant’s protected mark supports findings of bad faith registration and use.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.
Identical to or Confusingly Similar
Complainant claims that it uses the ORBITZ mark in connection with an array of travel agency services, including but not limited to: transportation, hotel reservations, travel news, and electronic services to facilitate booking and reservation processes. Complainant notes that it registered the ORBITZ mark with the USPTO (Reg. No. 2,799,051 registered on Dec. 23, 2001). The Panel finds that USPTO registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the ORBITZ mark, irrespective of whether Respondent dwells in Canada or elsewhere in the world. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel finds that Complainant has rights in the ORBITZ consistent with requirements of Policy ¶ 4(a)(i).
Complainant also claims that the <orobitz.com> domain name is confusingly similar to the ORBITZ mark. Complainant points out that no distinctiveness is provided by the gTLD “.com,” and addition of an extraneous letter to the mark is not enough to defeat confusing similarity. The Panel agrees that the addition of a gTLD is not relevant to the examination under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also agrees that Respondent’s decision to add the letter “o” into the ORBITZ mark is not enough to defeat the confusing similarity of the domain name. See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that the <orobitz.com> domain name is confusingly similar to the ORBITZ mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 UDRP ¶ 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 interest 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.”).
Complainant claims that Respondent is not commonly known by the <orobitz.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent’s use of the ORBITZ mark in Internet domain names. Complainant also claims that it has not and will not sponsor Respondent or his activites. The Panel notes that the <orobitz.com> domain name’s WHOIS information lists the “Domain Librarian / parkingpartners@upc360.com” as the registrant of the domain name. The Panel agrees that no other evidence in this record identifies Respondent and it is appropriate to conclude that Respondent is not commonly known by the <orobitz.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also argues that Respondent is utilizing the <orobitz.com> domain name to shuttle Internet users to a website that promotes generic hyperlinks to various third-party websites, some of which compete directly with Complainant’s business. The Panel notes that Respondent placed on the <orobitz.com> domain name advertisements, including competitive advertisements, reading “CHEAP FLIGHTS – 80% OFF” and “SENIOR AIRLINE TICKETS.” See Compl., at Attached Ex. H. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel determined that a domain name offering commercial hyperlinks to competing and related businesses did not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), and that the domain name’s commercial use foreclosed a finding of a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Similarly, the Panel finds that Respondent’s use of the <orobitz.com> domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent elected to host competing hyperlinks on the <orobitz.com> domain name’s website. Complainant suggests that such conduct is an indicator that Respondent seeks to cause an unfair disruption of Complainant’s commercial enterprise. The Panel observes that hyperlinks on the disputed domain name, under the evidence, take Internet users to competing flight offerings through the <travelzoo.com> and <travelation.com> domain names. See Compl., at Attached Ex. H. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel agreed that the presence of competing hyperlinks was sufficient evidence to support findings that the respondent sought to disrupt the complainant’s business in bad faith. The Panel here agrees and finds that Respondent engaged in conduct that supports findings of bad faith pursuant to Policy ¶ 4(b)(iii) by disrupting Complainant’s business through competing hyperlinks.
Complainant next argues that Respondent is creating a likelihood that Internet users will be confused relative to Complainant’s support or affiliation with the <orobitz.com> domain name. Complainant points out that Respondent profits through this confusion through the monetization of hyperlink advertisements. The Panel finds that the disputed domain name’s website—a directory of related and competing hyperlinks—represents conduct that also supports findings of bad faith. See Compl., at Attached Ex. H. Use of a confusingly similar domain name for purposes of promoting monetized hyperlinks has traditionally been found to be sufficient evidence to find a Policy ¶ 4(b)(iv) likelihood of confusion for a respondent’s commercial gain and bad faith. 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.’”).
Complainant further argues that Respondent’s behavior at the <orobitz.com> domain name is clear evidence of typosquatting. The Panel again notes that the disputed domain name introduces an additional letter “o” into the ORBITZ mark. Previous panels have found that typosquatting occurs when the domain name at issue is a common and basic misspelling of a complainant’s trademark—the addition of new terms, phrases, and the like are seldom subtle enough to be considered typosquatting. See, e.g., Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). The Panel finds that addition of the letter “o” into the ORBITZ mark is within the realm of typosquatting, which in and of itself supports findings by the Panel Policy ¶ 4(a)(iii) bad faith.
Complainant claims that Respondent’s decision to include content directly related to Complainant’s business illustrates that Respondent sought to intentionally capitalize on the ORBITZ mark. The Panel notes that Respondent uses the disputed domain name to send Internet users to the website discussed throughout above, and that this web content is hosted on the <someqwert.com> domain name. The Panel finds that Respondent’s use of a confusingly similar domain name to redirect Internet users to an unrelated website showcases an intent to infringe upon the ORBITZ mark; the Panel accordingly finds that Respondent registered the domain name in bad faith under a Policy ¶ 4(a)(iii) analysis to infringe on Complainant’s mark and that Respondent had actual knowledge of Complainant’s interest in the mark. See, e.g., Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy.").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <orobitz.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 6, 2014.
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