Priceline.com, Inc. v. Private Registration / WhoisGuardService.com
Claim Number: FA1608001686935
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pricedline.com>, registered with Nanjing Imperiosus Technology Co. 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 August 4, 2016; the Forum received payment on August 4, 2016. The Complaint was submitted in both Chinese and English.
On August 4, 2016, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the Forum that the <pricedline.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. 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 August 8, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 29, 2016 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@pricedline.com. Also on August 8, 2016, the Chinese language 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 September 12, 2016, 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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the default language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the PRICELINE.COM trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,481,112, registered Aug. 28, 2001). The mark is used in connection with the promotion and provision of travel agency services. Respondent’s <pricedline.com> domain name is confusingly similar as it incorporates the mark entirely and merely adds the letter “d.”
Respondent has no rights or legitimate interests in the disputed <pricedline.com> domain name. Respondent is not commonly known by <pricedline.com> domain name. Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent redirects Internet users to Complainant’s competitors, presumably in exchange for consideration.
Respondent has registered and used the disputed domain in bad faith. Respondent has listed the domain for sale to the general public, indicating bad faith under Policy ¶4(b)(i). Respondent’s diversion to Complainant’s competitors for commercial gain imputes Policy ¶¶ 4(b)(iii) and (iv) bad faith registration and use. Further, Respondent’s false WHOIS information indicates bad faith under a nonexclusive interpretation of Policy ¶ 4(a)(iii), as is its typosquatting behavior.
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 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(f), 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 (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 registered the PRICELINE.COM trademark with the USPTO (Reg. No. 2,481,112, registered Aug. 28, 2001). The mark is used in connection with the promotion and provision of Complainant’s travel agency services. Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶ 4(a)(i). Complainant is not required to prove rights (much less superior rights) in Respondent’s home country; merely that Complainant has some rights somewhere. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005). Complainant has rights in the PRICELINE.COM mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <pricedline.com> domain name is confusingly similar as it incorporates the mark entirely and merely adds the letter “d.” Minor misspellings have not been considered sufficiently distinguishing under a Policy ¶ 4(a)(i) analysis because the mark and the domain are still confusingly similar, see Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) decision, where the panel found that adding the letter “z” to complainant’s AMAZON.COM mark did not differentiate the disputed domain name from complainant’s mark in which it had rights. Respondent’s domain name is confusingly similar to Complainant’s mark under a Policy ¶ 4(a)(i) analysis.
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 (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 (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 has no rights or legitimate interests in the disputed <pricedline.com> domain name. Respondent is not commonly known by <pricedline.com> domain name. Respondent has no trademark or intellectual property rights in the disputed domain name. The WHOIS lists “Private Registration / WhoisGuardService.com” as registrant of record. This name bears no obvious relationship to the disputed domain name. Complainant has not licensed, authorized or permitted Respondent to register or use the disputed domain name (or any other domain name) using Complainant’s PRICELINE.COM mark. Respondent has not responded to the complaint, leaving no evidence in the record to conclude Respondent is commonly known by the <pricedline.com> domain name. Therefore, this Panel must conclude Respondent is not commonly known by the <pricedline.com> domain name.
Complainant claims Respondent is not making 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 uses the disputed domain name to redirect Internet users to a website that competes directly with Complainant. Redirecting a domain name to a competing web site does not create rights or legitimate interests under Policy ¶ 4(a)(ii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant). Respondent has not demonstrated any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Responded has not acquired any rights to the domain name because it was registered through a WHOIS privacy service. This means Respondent has not publicly associated itself with the disputed domain name (because Resident is a non-disclosed beneficial owner). Therefore, the disputed domain name has not acquired a secondary meaning for Respondent.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has registered and used the disputed domain in bad faith. Respondent has listed the domain for sale to the general public, indicating bad faith under Policy ¶ 4(b)(i). Making a general offer to the public to sell a domain name is evidence of bad faith registration and use. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(i).
Complainant claims Respondent’s domain name directs visitors to Complainant’s competitors for commercial gain, which would constitute bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Other panels have agreed. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). The parties are clearly competitors. Respondent disrupts Complainant’s business under Policy ¶¶ 4(b)(iii) by its registration and use of the disputed domain name. Respondent is attracting internet users to its web site by creating a likelihood of confusion about who runs the web site, which constitutes bad faith registration and use under Policy ¶¶ 4(b)(iv).
Finally, Respondent registered the domain name using a privacy service. This raises the rebuttable presumption of bad faith registration in a commercial context. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (Forum Nov. 24, 2014) (finding that registration of the disputed domain name using a privacy service “[i]n the commercial context…raises the rebuttable presumption of bad faith use and registration…[and] justifies a finding of bad faith registration and use.”); see also Capital One Financial Corp. v. DCH, FA 487835 (Forum Apr. 9, 2013) (concluding that “the fact Respondent originally registered the domain name with a privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use…That fact alone sufficiently demonstrates bad faith registration and use.”); see also Orbitz Worldwide, LLC v. Kim Bum / No Company, FA 538678 (Forum Jan. 10, 2014) (holding that using a privacy service in a commercial context raises a rebuttable presumption of bad faith registration and use.). Respondent has done nothing to rebut this presumption. Therefore, this Panel is comfortable finding 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 <pricedline.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 19, 2016
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