CHEAPCARIBBEAN.COM, Inc. v. ICS INC.
Claim Number: FA1409001582257
Complainant is CHEAPCARIBBEAN.COM, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapcarbbean.com>, registered with Tucows, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2014; the National Arbitration Forum received payment on September 29, 2014.
On September 30, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <cheapcarbbean.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 October 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@cheapcarbbean.com. Also on October 2, 2014, 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 October 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <cheapcarbbean.com> domain name is confusingly similar to Complainant’s CHEAPCARRIBEAN.COM mark.
2. Respondent does not have any rights or legitimate interests in the <cheapcarbbean.com> domain name.
3. Respondent registered and uses the <cheapcarbbean.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses CHEAPCARIBBEAN.COM to promote a travel agency for reserving space on cruise liners and other transit services. Complainant holds a trademark registration for the CHEAPCARIBBEAN.COM mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,316,639, registered Oct. 23, 2007). Complainant registered the domain name <cheapcaribbean.com> on December 11, 2000, and has continuously used the name and mark since.
Respondent registered the <cheapcarbbean.com> domain name on May 10, 2005, and uses it to promote hyperlink advertisements to third party resort and travel businesses.
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 Panel finds that Complainant’s USPTO registration for the CHEAPCARIBBEAN.COM mark satisfies the Policy ¶ 4(a)(i) requirement that Complainant have rights in a trademark, and that such rights date back to the filing date of February 7, 2007. See 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.”); Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant suggests that its relevant trademark rights date back further than the aforementioned USPTO filing date. In so arguing, Complainant notes that it first began using the CHEAPCARIBBEAN.COM mark in commerce in December 2000. The Panel notes that Complainant registered the domain name <cheapcaribbean.com> on December 11, 2000, and provides evidence of its use shortly thereafter. In the absence of any argument from Respondent, the Panel finds that Complainant has rights in the mark dating back to December 11, 2000. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant argues that Respondent’s <cheapcarbbean.com> domain name is confusingly similar to the CHEAPCARRIBEAN.COM mark as it merely removes the single letter “i.” The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent is not commonly known by the <cheapcarbbean.com> domain name, noting that “ICS INC.” is listed as the WHOIS registrant of this domain name. Complainant has denied that Respondent has any authorization to use its CHEAPCARIBBEAN.COM mark in domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent is using the domain name to promote hyperlink advertisements to third party resort and travel businesses. The Panel notes that the <cheapcarbbean.com> domain name resolves to advertisements for services such as “Walt Disney World,” “Clearwater Resort Living,” or “All Inclusive Cancun Packages.” The Panel finds that this use of the disputed domain name does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has also used the <cheapcarbbean.com> domain name to offer it for sale. The Panel notes that when conducting a WHOIS search for the domain name, there is an alert that the domain name has been listed for sale. The Panel finds that a general offer to sell a domain name is evidence of 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).”).
Complainant also argues that Respondent has engaged in a pattern of bad faith registrations. The Panel notes Shoedazzle.com, Inc. v. ICS INC., FA 1557085 (Nat. Arb. Forum June 18, 2014). The Panel finds that this adverse decision against Respondent, along with others provided by Complainant, demonstrate Respondent’s pattern of bad faith registration under 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).
Respondent is disrupting Complainant’s business by using the <cheapcarbbean.com> domain name for content competing with Complainant’s content at <cheapcarribean.com>. The Panel finds that this use Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that the competing content on the <cheapcarbbean.com> domain name amplifies the likelihood that Internet users will be confused as to Complainant’s association with the website. The Panel agrees and finds that Respondent is generating advertising revenue from this confusion in an act of Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent is typosquatting because he registered the disputed domain name to capitalize on a common misspelling of “caribbean.” The Panel finds that Policy ¶ 4(a)(iii) bad faith may be inferred from this typosquatting. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied 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 <cheapcarbbean.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 4, 2014
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