CHEAPCARIBBEAN.COM, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1501001598348
Complainant is CHEAPCARIBBEAN.COM, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapcaribean.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2015; the National Arbitration Forum received payment on January 6, 2015.
On January 8, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <cheapcaribean.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2015 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@cheapcaribean.com. Also on January 14, 2015, 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 February 9, 2015, 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 has operated the CHEAPCARIBBEAN.COM business since December 2000, and uses this mark to promote travel services to individuals seeking resort vacations. The CHEAPCARIBBEAN.COM mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,316,639, registered Oct. 23, 2007, filed Feb. 7, 2007).
There is information stating that the mark had a December 2000 launch. Complainant has spent millions advertising and has generated billions in sales over the years.
The <cheapcaribean.com> domain name itself is confusingly similar to the trademark in that it merely misspells the mark.
Respondent has no right or legitimate interest in the <cheapcaribean.com> domain name. First, Respondent has never been commonly known by this <cheapcaribean.com> domain name. Furthermore, the <cheapcaribean.com> domain name appears to resolve to a website dedicated to the promotion of various tropical and Caribbean vacation deals. Additionally, Respondent failed to respond to Complainant’s demand letter.
Respondent registered and is using the <cheapcaribean.com> domain name in bad faith. Respondent has been subject to prior adverse UDRP decisions, illustrating a pattern of bad faith registration. Respondent wants to disrupt Complainant’s business through the use of competing hyperlinks on the disputed domain name’s website. Further, Respondent is profiting through likelihood that Internet users will be confused as to Complainant’s association with this website. Lastly, Respondent has engaged in typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CHEAPCARIBBEAN.COM mark through its registration of such mark with the USPTO and otherwise by demonstrating common law in this unopposed proceeding.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to address a website that promotions various tropical and Caribbean vacation deals.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the CHEAPCARIBBEAN.COM mark for the purposes of Policy ¶4(a)(i) through its USPTO trademark registration of said mark. Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain name differs by Complainant’s CHEAPCARIBBEAN.COM trademark in that it lacks a letter “b.” Merely removing a single letter “b” from Complainant’s mark does nothing to distinguish the at-issue domain name from the Complainant’s trademark. Indeed, the mark and the domain name sound identical when spoken. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s CHEAPCARIBBEAN.COM trademark under Policy ¶4(a)(i). See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and 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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Additionally, as a general prerequisite to dismissing Respondent having any rights or interests in respect of the <cheapcaribean.com> domain name Complainant’ needs to show that its trademark rights were enforceable at the time Respondent’s registered the domain name. Having trademark rights at the time of a domain name’s registration is likewise a prerequisite to finding the paragraph 4(a)(iii) bad faith the Panel discusses in the section below. This is true because a respondent logically cannot manifest a bad faith intent regarding a complainant’s trademark at a time prior to such trademark’s existence. While there may be exceptions to this maxim, here it appears that under the circumstances Complainant has sufficiently demonstrated its having rights in a mark at the time Respondent registered the at-issue domain name. Support for this conclusion is advanced: 1) in light of the fact that there was no opposition to the Complaint nor a response to Complainant’s pre-complaint demand letter; 2) given the nature of evidence introduced by Complainant to show it had common law trademark rights in CHEAPCARIBBEAN.COM prior to the domain name’s registration; and 3) given that the at-issue mark, although composed of generic terms, is more suggestive than descriptive and not likely to have been selected for registration without prior knowledge of Complainant’s mark. Further, the temporal proximity between the start-up of Complainant’s business and Respondent’s registration of the at-issue domain name indicates that Respondent’s registration of <cheapcaribean.com> might likely have been to capitalize on the goodwill associated with Complainant’s online business and trademark. Therefore, the Panel finds that Complainant’s rights in the CHEAPCARIBBEAN.COM trademark relate back to on or before Respondent’s registration of the <cheapcaribean.com> domain name.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Domain Admin / Private Registrations Aktien Gesellschaft” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <cheapcaribean.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <cheapcaribean.com> domain name addresses a website that promotes various tropical and Caribbean vacation deals. Using the domain name in this manner 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).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The nominal Respondent has been subject to prior adverse UDRP decisions, illustrating a pattern of bad faith registration. Respondent’s prior adverse UDRP disputes include LifeLock Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1586005 (Nat. Arb. Forum Jan. 5, 2015) and Lenovo LC China v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1586495 (Nat. Arb. Forum Dec. 10, 2014). However, the nominal Respondent is actually the privacy facility which acts as a proxy for Respondent’s true identity. Since this same name ‑Domain Admin / Private Registrations Aktien Gesellschaft‑ masks not only Respondent’s real name but likely also cloaks the name of other parties availing themselves of the privacy service, the Panel cannot conclude that the real respondents in the cases cited by Complainant were each the real respondent in the instant case.
Respondent’s website displays competing hyperlinks thus Respondent uses the at-issue domain name to promote businesses that compete with Complainant. Such use of the domain name does not show good faith, but instead indicate an intent to disrupt Complainant’s legitimate commercial endeavors and demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii). 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.
Respondent clearly intends to profit via the likelihood that Internet users will be confused as to Complainant’s association with Respondent’s <cheapcaribean.com> website. The confusion causes Internet users seeking Complainant to inadvertently land on Respondent’s website where they might click one of the displayed links. The Panel therefore finds that Respondent has registered and used the domain name in bad faith as demonstrated under Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006)(finding that that use of a disputed domain name for hyperlink advertising of competitors was suggestive of Policy ¶ 4(b)(iv) bad faith because the respondent could profit each time an Internet user mistakenly clicked a hyperlink).
Finally, Respondent’s domain name exemplifies typosquatting. Typosquatting is a scheme whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. On mistyping a target trademark into a browser’s address box or search engine wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited through pay-per-click links or otherwise. Here, Respondent simply strikes a letter “b” from Complainant’s trademark to form the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapcaribean.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 12, 2015
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