DECISION

 

Travelocity.com LP v. John Smith

Claim Number: FA0306000161279

 

PARTIES

Complainant is Travelocity.com LP, Fort Worth, TX, USA ("Complainant") represented by Demetrius T. Lockett of Alston & Bird, LLP. Respondent is John Smith, South Africa ("Respondent") represented by Phillipa Heyman.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwtravelocity.com> registered with Domain People Inc.

 

PANEL

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.

 

Rodney C. Kyle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 2, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

 

On June 4, 2003, Domain People Inc. confirmed by e-mail to the Forum that the domain name <wwwtravelocity.com> is registered with Domain People Inc. and that the Respondent is the current registrant of the name. Domain People Inc. has verified that Respondent is bound by the Domain People Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwtravelocity.com by e-mail.

 

A timely Response was received and determined to be complete on June 25, 2003.

 

On June 30, 2003, an Additional Submission was received from Complainant though the fee was late, being received only on July 7, 2003.

 

On July 3, 2003, a timely Additional Submission was received from Respondent.

 

On July 7, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Basically, in the Complaint, Complainant makes four main contentions.

 

First, Complainant basically contends by way of four points that (i) the domain name at issue is registered to Respondent; (ii) Complainant "is a wholly owned subsidiary of Sabre Holdings Corporation" and has "rights in the world-famous marks TRAVELOCITY and TRAVELOCITY.COM (hereinafter 'the TRAVELOCITY Marks')" which marks Complainant has "continuously used" since "at least as early as 1996 … to identify its online travel and accommodations services", which is "well prior to the date on which Respondent registered and began using the [domain name at issue]"; (iii) "[t]hose rights are reflected in 45 registrations in 18 countries, including United States Registration Nos. 2,254,700 and 2,466,132" respectively; and (iv) the domain name at issue "incorporates [Complainant's] famous TRAVELOCITY mark in full" and is confusingly similar to said marks.

 

Second, Complainant basically contends by way of three points that Respondent has no "rights or legitimate interests" in respect of the domain name at issue in that (i) besides itself, Complainant "is not aware of" any "individual or entity anywhere in the world with the legal right to use the mark TRAVELOCITY in connection with any goods or services" and instead "Respondent has no connection or affiliation with [Complainant], nor has [Respondent] at any time received from [Complainant] license or consent, express or implied, to use the TRAVELOCITY Marks in a domain name or in any other manner"; (ii) Complainant believes "Respondent belongs to affiliate programs for the various travel related Web sites to which [Respondent's] site links" and, as such, "Respondent is paid by the operators of the linked sites for each Internet user Respondent directs to the sites", such that "Respondent's transparent motivation for registering and using the [domain name at issue] is to profit by diverting Internet users[,] who mistakenly fail to type a period between "www" and TRAVELOCITY.COM in their browser address bars[,] to Respondent’s Web site and then to the various Web sites linked to Respondent’s site"; and (iii) Respondent registered the domain name at issue on August 11, 2000, which is "more than four years … after [Complainant] began using its mark worldwide" and "Respondent was on notice of [Complainant’s] exclusive rights in the TRAVELOCITY Marks as a result of [Complainant's] numerous federal and international registrations of the marks and the international fame of the marks based on [Complainant's] longstanding international use and promotion thereof."

 

            Third, Complainant basically contends by way of two points that Respondent's

            registration and use of the domain name at issue are in bad faith, respectively as defined

            by Policy paragraph 4(b)(iv) and the preamble of Policy paragraph 4(b), in that (i) "to

            capitalize upon the goodwill and fame associated with the TRAVELOCITY Mark"

            Respondent has used the domain name at issue "to host a Web site that offered access to

            online travel retailers …, including a link to Expedia.com, a direct competitor of"

            Complainant; and (ii) as separate bases under the Policy paragraph 4(b) preamble, (a)

            although Complainant's counsel sent cease and desist letters by either or both of hard-

            copy and e-mail to Respondent dated January 8, 2002 and April 16, 2003, "[t]o date,

            neither [Complainant] nor its counsel has received a response from Respondent to either

            of these letters" except that the January 8, 2002 "letter was returned by UPS as

            'undeliverable'" and "[a]t some point after [Complainant's] counsel sent its April 16 letter

            … Respondent stopped using the[domain name at issue] to host" Respondent's web site

            and (b) Respondent "provided false contact information for himself in his registration of

            the" domain name at issue, in that said contact information "apparently includes a non-

            existent city/township" and that "the January 8th UPS leader was returned

            'undeliverable.'"    

           

            Fourth, Complainant basically contends that (i) the domain name at issue is registered to

            Respondent is evidenced by a "copy of DomainPeople’s WHOIS record for the domain

            Name WWWTRAVELOCITY.COM" that is "Exhibit 1 to the Declaration of Demetrius

            T. Lockett (hereinafter the 'Lockett Decl.')," that is Complaint Exhibit A, and by "[a]

            copy of the relevant listing from Verisign’s database is attached as Exhibit 2 to the

Lockett Decl."; (ii) "[t]rue and correct copies of the Certificates of Registration for [Complainant's] U.S. trademark registrations are attached as Exhibit 1 to the Declaration of Keenan Conder (hereinafter 'Conder Decl.'), attached to [the] Complaint as Exhibit B"; (iii) Complaint Exhibits A and B evidence Complainant's rights in, and the fame of, the TRAVELOCITY Marks; (iv) Complaint Exhibit A includes as its Exhibit 3 "[a] true and correct printout of the home page of Respondent’s Web site" as it existed before Complainant's counsel sent the April 16, 2003 letter; and (v) Complaint Exhibit A includes, respectively as its Exhibits 4 and 5, copies of said letters from Complainant's counsel dated January 8, 2002 and April 16, 2003.

 

B. Respondent

Basically, in the Response, Respondent makes three main contentions.

 

First, basically in response to Complainant's first main set of contentions, Respondent expressly pleads that the domain name at issue "is similar to" TRAVELOCITY.COM  and that "[w]hen [Complainant] first discovered the domain name [at issue], the Respondent was using the [domain name at issue] to host a Web site that offered access to online travel retailers". However, Respondent then basically contends by way of two points that the domain name at issue is not confusingly similar in that (i) "when the Respondent received notification from [Complainant] on April 16, 2003 stating [Complainant’s] demands, the Respondent immediately ceased to use the domain publicly" and "continued (and still continues) to use the domain as a place to store information and web design images, and the domain is not for public use in any way" and that "the site is being used for personal storage of information only"; and (ii) Respondent's web site "states that the [domain name at issue] has been registered and is Under Construction," such that "[i]t is therefore apparent to someone who types in [the corresponding] url in error that they indeed have made a mistake and that this is NOT [Complainant's] website."

 

Second, basically in response to Complainant's second main set of contentions, Respondent basically contends by way of two points that (i) the domain name at issue "is the personal property of" Respondent; and (ii) "[o]nce the Respondent was notified by [Complainant] [Respondent] immediately took the site down" and Respondent is using the domain name at issue "as a place to store information and web design images for personal use" and that thereby "Respondent is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

 

Third, basically in response to Complainant's third main set of contentions, Respondent basically contends by way of two points that (i) rather than being contrary to Policy paragraph 4(b)(iv), "[t]he domain name [at issue] is the personal property of the respondent, is being used for personal purposes with no intent for commercial gain and is therefore not being used in bad faith" and indeed that "Complainant recognizes there is no bad faith because [Complainant] states that the website was taken down in April" so "the issues of confusion and similarity no longer apply" and "Respondent has no plan to use the website in any manner that is remotely confusing and is therefore acting in good faith"; and (ii) rather than having provided false contact information in registering the domain name at issue contrary to the preamble of Policy paragraph 4(b), "when registering a domain name, the format provided to submit the Registrant’s address is in a format suitable for an American address only" such that "[i]t is not in a suitable format for a South African address as there are no 'States' in South Africa as there are in the USA" so "Respondent had to enter 'South Africa' as the state" and, in any event, "Respondent had subsequently moved from the address that was listed as [Respondent's] contact address when the Complainant attempted to send [Respondent] a letter and it was returned 'undeliverable'."

 

C. Additional Submissions

Each Party delivered an Additional Submission, largely repetitive of that Party's respective Complaint or Response. Even to the extent of not repeating themselves, and even if each is considered timely, neither Party’s Additional Submission permissibly provides anything pertinent that, in view of the Complaint and the Response, was not already apparent to the Panel as being at issue in this proceeding or as being the responsibility of the Panel.

 

FINDINGS

The Panel finds

(i)                  the domain name at issue is registered to Respondent, there is at least the trademark TRAVELOCITY.COM in which Complainant has rights, and the domain name at issue is confusingly similar thereto;

(ii)                Respondent has no rights or legitimate interests in respect of the domain name at issue; and

(iii)              the domain name at issue has been registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i)                  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)                the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)              the domain name has been registered and is being used in bad faith.

 

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. "real evidence"); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode "3", that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Third, as to construing and applying Rule 10(d), especially as to whether mode "1" rather than mode "3" applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being "relevant to") establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode "2" rather than either of mode "1" or mode"3" applies, a canvassing of law and commentary shows that 

It was not desirable, nor indeed possible, to foreclose the trier's use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]

and that "The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question."[5]

 

Identical or Confusingly Similar

Respondent's first main set of contentions do not put in issue the basic facts contended for by Complainant's first main set of contentions, even as to whether there is similarity.  Respondent's first main set of contentions do, however, put in issue whether the domain name is confusingly similar in that Respondent is not now using (as contrasted with was using) the domain name in commerce.

 

For Policy paragraph 4(a)(i) to be met requires a domain name to be identical or confusingly similar to a trademark or service mark in which a complainant has rights, whether or not (aside from obtaining the domain name registration) the domain name registrant is using that mark or one confusingly similar to it. See e.g. Porto Chico Stores, Inc. v. Otavio Zambon , D2000-1270 (WIPO, November 15, 2000) which includes that "The panel considers this issue is to be resolved by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used." (Underlining added.) Similarly, see e.g. The Vanguard Group v. Lorna Kang, D2002-1064 (WIPO January 20, 2003) and The Toronto-Dominion Bank v. Lorna Kang, FA 150816 (Nat. Arb. Forum April 28, 2003).

 

The Panel finds that Respondent's prefacing Complainant’s TRAVELOCITY.COM mark with "www" does not under Policy paragraph 4(a)(i) sufficiently distinguish the domain name at issue because Complainant’s mark remains the principal element of the domain name at issue. See e.g. Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) which includes that the letters "www" are not distinct in the "Internet world" and thus that respondent 's <wwwmarieclaire.com> domain name is confusingly similar to that complainant's MARIE CLAIRE trademark; see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) including that confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from that complainant's NEIMAN-MARCUS mark.

 

In view especially of the three immediately preceding paragraphs, the Panel finds that Policy paragraph 4(a)(i) is proven.

 

Rights or Legitimate Interests

The context in which this part of this discussion occurs includes (i) Policy paragraph 4(c); and (ii) administrative panel decisions as to burden of production.

 

Policy Paragraph 4(c)

Policy paragraph 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy paragraph] 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(See endnote 2 hereof for some provisions of Rule 5.)

 

As for Policy paragraph 4(c)(ii), it does not appear to be contended for by Respondent in this proceeding, whether by evidence or otherwise.

 

As for Policy paragraphs 4(c)(i) and 4(c)(iii), and the preamble of paragraph 4(c), they appear to be contended for by either or both of Respondent's pleadings and argument (but not by evidence) in this proceeding.

 

Even if Respondent could be said to have adopted one or more aspects of Complainant's evidence and contended them to be in support of Policy paragraph 4(c)(i), in the circumstances of this case the "offering" could not have been "bona fide". See e.g. Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) which includes that "[t]yposquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site."

 

Even if Respondent could be said to have adopted one or more aspects of Complainant's evidence and contended them to be in support of Policy paragraph 4(c)(iii) (rather than Respondent's merely providing the Panel with a hypertext link to Respondent's web site apparently resolving through the domain name at issue), in the circumstances of this case the "use" cannot be "legitimate". See e.g. Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, supra, and Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) which includes that fair use does not apply where the domain names are misspellings of complainant's mark.

 

Even if Respondent could be said to have adopted one or more aspects of Complainant's evidence and contended them to be in support of the preamble of Policy paragraph 4(c) (as to the domain name at issue being Respondent's personal property), Respondent's contention would be wrong. If a respondent's domain name registration that is the very subject-matter of a mandatory administrative proceeding under the Policy could, per se, confer or evidence "rights or legitimate interests" within the meaning of that expression as it appears in Policy paragraph 4(a)(ii) then the Policy would basically be rendered a nullity. As a result, it has long been well and clearly established by mandatory administrative proceeding decisions under the Policy that such registrations do not do so. See e.g. the following decisions, and decisions in which they are cited: N.C.P. Marketing Group, Inc. v. Entredomains, D2000-0387 (WIPO July 5, 2000) and Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000).

 

Administrative Panel Decisions As To Burden Of Production

Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this case, "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue" (emphasis in original). To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).

 

Summary

In view especially of the eight immediately preceding paragraphs, the Panel finds that Policy paragraph 4(a)(ii) is proven.

 

Registration and Use in Bad Faith

The context in which this part of this discussion occurs includes Policy paragraph 4(b).

 

Policy paragraph 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

For the purposes of [Policy paragraph] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

As for each of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced via application of the respective one of those three provisions. In this proceeding, none of Policy paragraphs 4(b)(i), 4(b)(ii), or 4(b)(iii) appears to be contended for.

 

As for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then bad-faith registration is in turn evidenced via application of that provision. In this proceeding, Policy paragraph 4(b)(iv) and the preamble of Policy paragraph 4(b) appear to be contended for by Complainant by way of pleading, evidence, and argument and, in response, Respondent puts in issue whether Policy paragraph 4(b)(iv) and the preamble of Policy paragraph 4(b) are proven. As a result, the Panel notes two points. First, Respondent basically urges the Panel to misconstrue Policy paragraph 4(b)(iv) as being limited to the present tense; it is not limited to the present tense. Second, Exhibit 3 to Complaint Exhibit A (i.e. "[a] true and correct printout of the home page of Respondent’s Web site" as it existed before Complainant's counsel sent the April 16, 2003 letter) is especially material evidence; moreover, it is relevant, admissible, is to be accorded substantial weight, and indeed proves the facts that meet Policy paragraph 4(b)(iv). (Similarly see e.g. TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) finding bad faith where respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of complainant; Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) finding bad faith where respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as complainant; Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) finding the <wwwdewalt.com> domain name was registered to "ensnare those individuals who forget to type the period after the 'www' portion of [a] web-address," evidence that the domain name was registered and used in bad faith; and Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) stating that "in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name".)

 

In view of the immediately preceding paragraph hereof, the Panel need not address the Parties' contentions regarding the preamble of Policy paragraph 4(b).

 

In view especially of the five immediately preceding paragraphs, the Panel finds that Policy paragraph 4(a)(iii) is proven .

 

DECISION

All three elements required under the Policy having been established, the Panel concludes that the relief requested by Complainant shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwtravelocity.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Rodney C. Kyle, Panelist
Dated: July 21, 2003

 

 

 

 

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