TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA1506001623459
Complainant is TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is RAKSHITA MERCANTILE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tripadvisosr.com>, registered with Tirupati Domains and Hosting Pvt Ltd..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2015; the Forum received payment on June 9, 2015.
On June 17, 2015, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <tripadvisosr.com> domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt 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 June 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@tripadvisosr.com. Also on June 24, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Policy ¶4(a)(i)
Complainant operates the world’s largest travel website. Complainant has rights in the TRIPADVISOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,727,627, registered on June 17, 2003). Respondent’s <tripadvisosr.com> is confusingly similar to the TRIPADVISOR mark because it is differentiated by only the additions of the letter “s” to the word “advisor” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶4(a)(ii)
Respondent is not commonly known by the <tripadvisosr.com> domain name, because the available WHOIS information lists “RAKSHITA MERCANTILE PRIVATE LIMITED” as Registrant. Complainant has not authorized Respondent to use its TRIPADVISOR mark. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the <tripadvisosr.com> domain name to host third-party links, some of whom directly compete with Complainant.
Policy ¶4(a)(iii)
Respondent uses the disputed domain names in bad faith because Respondent offers the <tripadvisosr.com> domain name for sale. Respondent has demonstrated a pattern of bad faith registration through prior decided UDRP cases against it. Respondent currently uses the disputed domain name to host links to third-party websites, which include competitors to Complainant. Respondent’s use of the resolving website demonstrates that Respondent had actual knowledge of Complainant’s rights in the TRIPADVISOR mark. Respondent’s <tripadvisosr.com> domain name also constitutes typosquatting, which is specifically targeted at Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant operates the world’s largest travel website. Complainant has rights in the TRIPADVISOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,727,627, registered on June 17, 2003). Registration with the USPTO (or a similar governmental authority) adequately demonstrates rights in a mark under Policy ¶4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”). Complainant is not required to register its mark in Respondent’s country to prevail under Policy ¶4(a)(i). At this stage of the proceedings, all Complainant must do is show it has some rights in its marks somewhere in the world. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Complainant has rights in the TRIPADVISOR mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <tripadvisosr.com> domain name is confusingly similar to Complainant’s TRIPADVISOR mark because it is differentiated by only the addition of the letter “s” and the gTLD “.com.” The addition of “.com.” (or any TLD for that matter) is irrelevant to Policy ¶4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). To hold otherwise would eviscerate the UDRP. Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark. See 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).”). Respondent’s <tripadvisosr.com> domain name is confusingly similar to Complainant’s TRIPADVISOR mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent is not commonly known by the <tripadvisosr.com> domain name. The available WHOIS information presently lists “RAKSHITA MERCANTILE PRIVATE LIMITED” as Registrant. When this proceeding was originally filed, a WHOIS privacy service was listed. Respondent is not authorized to use Complainant’s TRIPADVISOR mark. There is no obvious relationship between the domain name and the Registrant’s name. Under such circumstances, this is sufficient to conclude Respondent is not commonly known by a domain name under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Respondent is not commonly known by the <tripadvisosr.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a dynamic parking web page. Respondent uses the <tripadvisosr.com> domain name parking page to host third-party links, some of whom directly compete with Complainant. Hosting competitive links is sufficient to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Respondent fails to use the resolving website to provide (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Respondent registered this domain name using a privacy service. This means Respondent never publicly associated itself with the disputed domain name. This further means Respondent has not acquired any rights to the domain name merely by registering it. Respondent has taken no steps to actively use the disputed domain name, so Respondent could not have acquired any rights that way either.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain names in bad faith because Respondent offers the <tripadvisosr.com> domain name for general sale. A general offer of sale for a domain name that is confusingly similar to a complainant’s mark can justify finding bad faith under Policy ¶4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”). Under the circumstances of this case, it appears Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for more than Respondent’s out of pocket costs. Although Respondent did not name a price, there is no incentive to sell the domain name unless Respondent makes a profit. Therefore, this Panel concludes Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent registered the <tripadvisosr.com> domain name in bad faith because Respondent has demonstrated a pattern of bad faith registration through prior decided UDRP cases against it. See Ashley Furniture Industries, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED; see also Capital One Financial Corp. v. RAKSHITA MERCANTILE PRIVATE LIMITED. This Panel is loathe to find losing a UDRP case should be considered evidence against a respondent. Each case should be considered on its own merits. However, past registrations may be an indication of Respondent’s business model…which might be relevant in determining if there is bad faith. Given Respondent’s prior history, this Panel finds Respondent registered and used the disputed domain name in bad faith. However, this finding is under the penumbra of Policy ¶4(b). Policy ¶4(b)(ii) requires a respondent to prevent a complainant from reflecting its mark in a domain name. Respondent has not done that in this case. Past panels may have found differently, but this Panel declines to follow that precedent. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).”). Respondent has registered and used the domain name in bad faith under the penumbra of Policy ¶4(b).
Complainant claims Respondent uses the <tripadvisosr.com> domain name to disrupt Complainant’s business operations. Respondent uses the domain name to host links on a dynamic parking page to third-party websites, which include Complainant and its competitors. Hosting competitive links is sufficient to find disruption under Policy ¶4(b)(iii), thereby showing bad faith registration and use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii).”). Respondent registered and uses the <tripadvisosr.com> domain name in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <tripadvisosr.com> to host links on a dynamic parking page to third-party websites. Presumably Respondent receives referral fees (or at least free web hosting), which constitutes a commercial gain. Such actions constitute bad faith registration and use pursuant to Policy ¶4(b)(iv). 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.’”). Respondent registered and uses the <tripadvisosr.com> domain in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered and operates the disputed domain name in bad faith because it has engaged in typosquatting. This Panel does not believe typosquatting is prohibited by the UDRP. While this may be shorthand method of referring to what is prohibited by the UDRP, this Panel prefers to follow the analysis mandated by the UDRP. Therefore, this Panel declines to find bad faith registration and use for “typosquatting.”
Finally, Respondent registered the domain name using a privacy service. This Panel has long held such registrations give rise to a rebuttable presumption of bad faith registration and use in the commercial context. Since Respondent has done nothing to rebut that presumption, this Panel finds bad faith registration and use on those grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tripadvisosr.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 17, 2015
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