priceline.com LLC v. levesque, bruno
Claim Number: FA1506001625137
Complainant is priceline.com LLC (“Complainant”), represented by Jamie E. Platkin of Cantor Colborn LLP, Connecticut, USA. Respondent is levesque, bruno (“Respondent”), CA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <priceline.voyage>, registered with Dynadot, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 19, 2015; the Forum received payment June 19, 2015.
On June 21, 2015, Dynadot, LLC confirmed by e-mail to the Forum that the <priceline.voyage> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC verified that Respondent is bound by the Dynadot, LLC registration agreement and 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@priceline.voyage. Also on June 23, 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 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the PRICELINE mark to identify its role as a provider of Internet-based travel services. Complainant registered the PRICELINE mark in more than 60 countries. Complainant registered the PRICELINE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,272,659, registered August 24, 1999), which demonstrates its rights in the mark. Complainant contends that the <priceline.voyage> domain name is confusingly similar to the PRICELINE mark, as it fully incorporates Complainant’s PRICELINE mark and merely adds the descriptive generic top-level domain (“gTLD”) name “.voyage.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Respondent’s use of the disputed domain name is not making a bona fide offering of goods and services, nor is it a legitimate noncommercial or fair use of Complainant’s mark. Respondent uses the disputed domain name to redirect Internet users to various other commercial websites. Additionally, Respondent offered the disputed domain name for sale in an amount that exceeded its out of pocket costs.
Respondent registered and is using the disputed domain name in bad faith. First, Complainant contends, Respondent offered the disputed domain name for sale. Second, Complainant argues, Respondent intends to disrupt Complainant’s business and cause customer confusion by refusing to disable or transfer the disputed domain name. Complainant also argues that Respondent uses the disputed domain name to attract Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s PRICELINE mark. Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the PRICELINE mark.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <priceline.voyage> domain name March 3, 2014.
FINDINGS:
Complainant established legal rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name and mark.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the mark in the disputed domain name 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the PRICELINE mark to identify its role as a provider of Internet-based travel services. Complainant registered the PRICELINE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,272,659, registered August 24, 1999), which demonstrates its rights in the mark. See Compl., at Attached Ex. K. The Panel agrees that trademark registrations with the USPTO suffice to demonstrate a Complainant’s rights in the PRICELINE mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that the <priceline.voyage> domain name is confusingly similar to the PRICELINE mark as it fully incorporates the Complainant’s PRICELINE mark and merely adds the descriptive generic top-level domain (“gTLD”) name “voyage.” Complainant argues that the “voyage” term is descriptive of Complainant’s services. The Panel agrees that the addition of a gTLD does not remove Respondent’s domain name from the realm of confusing similarity in relation to Complainant’s PRICELINE mark pursuant to Policy ¶ 4(a)(i). See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PRICELINE mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name containing in its entirety Complainant’s protected mark and that the domain name is confusingly similar to Complainant’s mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 has no rights or legitimate interest in the <priceline.voyage> domain name. First, Complainant contends, Respondent is not commonly known by the disputed domain name or any variant of the PRICELINE mark. Further, Complainant argues, Respondent has no license, permission, or authorization to own or use the PRICELINE mark as a part of the disputed domain name. The Panel notes that the WHOIS information merely lists “levesque, bruno” as registrant. Respondent failed to provide evidence for the Panel’s consideration, and the Panel has no basis in the available record to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant asserts that Respondent failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Respondent intentionally uses the PRICELINE mark to redirect Internet users to commercial websites of Respondent’s choice. The Panel notes that the disputed domain name redirects Internet users to websites such as: <vonage.com>, <leisure.com> and <kmart.com>. See Compl., at Attached Ex. Q. The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Accordingly, the Panel finds that Respondent did not provide a bona fide offering of goods or services or a legitimate noncommercial of fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Further, Complainant claims, Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant notes that Respondent offered the disputed domain name for sale. Complainant sets out that the disputed domain names previously redirected to a website offering the disputed domain name for sale for $2,500. See Compl., at Attached Ex. E. Additionally, Complainant notes that the WHOIS record for the disputed domain name indicates that the disputed domain name is for sale for $999. See Compl., at Attached Ex. D. The Panel agrees with Complainant’s contention and the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent engaged in bad faith registration and use of the <priceline.voyage> domain name. First, Complainant asserts, Respondent offered the disputed domain name for sale for profit. The Panel notes that Complainant submitted Attached Exhibits D and E for the Panel’s consideration, which allegedly demonstrate Respondent’s attempt to sell the disputed domain name for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Attempted sale of a disputed domain name by a respondent demonstrates conduct that supports findings of bad faith under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). Consequently, the Panel finds that the Respondent engaged in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent uses the disputed domain name to attract and confuse Internet users for commercial profit, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iv). Complainant asserts that Respondent is intentionally using the PRICELINE mark in the disputed domain name to attract Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Conduct to support findings of bad faith exists where a respondent is using a disputed domain name to intentionally deceive and/or confuse Internet users for their own commercial gain. 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). As such, the Panel finds that Respondent demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of the PRICELINE mark. Complainant argues that the inclusion of “priceline” in the disputed domain name, the combination of “priceline” with the descriptive gTLD “voyage,” and Respondent’s admission that he wanted to become Complainant’s affiliate make it clear that Respondent knew of the existence of Complainant’s PRICELINE mark when it registered the disputed domain name. See Compl., at Attached Ex. G. Conduct supporting findings of bad faith exists where the respondent was actually aware of the complainant’s protected rights in a mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Therefore, the Panel finds that Respondent had actual knowledge of the mark and Complainant’s rights pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <priceline.voyage> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 29, 2015
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