Priceline.com, Inc. v. Ziquan Wu
Claim Number: FA1403001547269
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ziquan Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pruiceline.com>, registered with Guangzhou Ming Yang Information Technology Co., 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2014; the National Arbitration Forum received payment on March 6, 2014. The Complaint was submitted in both Chinese and English.
On March 6, 2014, Guangzhou Ming Yang Information Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <pruiceline.com> domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd and that Respondent is the current registrant of the name. Guangzhou Ming Yang Information Technology Co., Ltd has verified that Respondent is bound by the Guangzhou Ming Yang Information Technology Co., 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 March 18, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 7, 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@pruiceline.com. Also on March 18, 2014, the Chinese language 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 April 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
i. Complainant, Priceline.com, Inc., is a leading online travel company that offers hotel and accommodation reservations at over 295,000 properties worldwide.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PRICELINE.COM mark (e.g., Reg. No. 2,481,112, registered August 28, 2001).
iii. The disputed domain name is confusing similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
i. Respondent has no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent has not been commonly known by the disputed domain name.
iii. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. The domain name should be considered as having been registered and being used in bad faith.
ii. Respondent has listed the disputed domain name for sale. See Complainant’s Ex. I.
iii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant in a disruptive manner.
iv. Respondent has registered and used the disputed domain name to attract and mislead consumers for its own profit.
v. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is a leading online travel company that offers hotel and accommodation reservations at over 295,000 properties worldwide.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PRICELINE.COM mark (e.g., Reg. No. 2,481,112, registered August 28, 2001).
3. The earliest date on which Respondent registered the disputed domain name was March 19, 2011.
4. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s 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."
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant asserts that it is a leading online travel company that offers hotel and accommodation reservations at over 295,000 properties worldwide. Complainant argues that it owns a trademark registration with the USPTO for the PRICELINE.COM mark (e.g., Reg. No. 2,481,112, registered August 28, 2001). See Complainant’s Exhibit E. The Panel observes that Respondent resides in China. However, the Panel holds that it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registers its mark in the country in which Respondent resides and operates. See 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). Thus, the Panel determines that Complainant’s registration of the PRICELINE.COM mark with the USPTO demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PRICELINE.COM mark. Complainant contends that Respondent’s <pruiceline.com> domain name is confusing similar to Complainant’s mark because it differs by only a single character from Complainant’s PRICELINE.COM mark. The Panel notes that Respondent adds the letter “u” to Complainant’s mark for the disputed domain name. The Panel finds that Respondent’s addition of a letter to Complainant’s mark does not distinguish the domain name from the mark under Policy ¶ 4(a)(i), nor does the addition of the generic top-level domain “.com.” See 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)). Accordingly, the Panel finds that Respondent’s <pruiceline.com> domain name is confusing similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PRICELINE.COM mark and
to use it in its domain name, making merely a minor spelling alteration when incorporating it into the domain name;
(b) Respondent has used the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant alleges that Respondent has not been commonly known by the <pruiceline.com> domain name. Complainant asserts that Respondent is not sponsored by, or legitimately affiliated with, Complainant in any way. Complainant argues that it has not given Respondent permission to use Complainant’s mark in any way. Further, the Panel notes that the WHOIS record lists “Ziquan Wu” as the registrant of the disputed domain name. See Complainant’s Exhibit I. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel concludes that Respondent is not commonly known under the <pruiceline.com> domain name pursuant to Policy ¶ 4(c)(ii);
(e) Complainant claims that Respondent is using the <pruiceline.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent is using the disputed domain name to provide competing links such as “Priceline Official Site,” “Low Cost Air Tickets,” “LOWEST AIRLINE TICKETS,” and more. See Complainant’s Exhibit H. Complainant asserts that Respondent is presumably receiving pay-per-click fees from these linked websites. Prior UDRP panels have concluded that a respondent’s use of a disputed domain name to provide links that directly compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan 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). Thus, the Panel holds that Respondent is not using the <pruiceline.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant argues that Respondent has listed the <pruiceline.com> domain name for sale. The Panel notes that the “DomainTools.com” WHOIS record for the disputed domain name features a sponsored advertisement that reads “<pruiceline.com> is for sale.” See Complainant’s Exhibit I. Past panels have held that a respondent’s offer to sell the disputed domain name shows bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant claims that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent is using the <pruiceline.com> domain name to provide competing links titled “Priceline,” “Priceline.com Hotels,” “Priceline.com Rental Cars,” and more. See Complainant’s Exhibit H. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel held that “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent’s use of the <pruiceline.com> domain name disrupts Complainant’s legitimate business and shows bad faith under Policy ¶ 4(b)(iii) because the domain name focuses on providing advertisements that send Internet users to related businesses that may compete with Complainant.
Thirdly, Complainant asserts that Respondent has registered and used the <pruiceline.com> domain name to attract and mislead consumers for its own profit. The Panel notes that Respondent is using the disputed domain name to provide a webpage that contains links that directly compete with Complainant and its business. See Complainant’s Exhibit H. Complainant alleges that Respondent may be collecting click-through fees for each misdirected Internet user. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel determined that “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).” As the Panel finds that Respondent is using the <pruiceline.com> domain name to mislead consumers and derive a profit, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant contends that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent adds an additional letter to Complainant’s PRICELINE.COM mark in the <pruiceline.com> domain name. Previous panels have found typosquatting where there is a disputed domain name representing a common typographical error with respect to a complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel concludes that Respondent has engaged in typosquatting as the Panel is of the view that the extraneous “u” is a common enough error to evidence Respondent’s bad faith intents under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the PRICELINE.COM mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pruiceline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 15, 2014
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