Carnival Corporation v. Can Oztoker
Claim Number: FA1707001739047
Complainant is Carnival Corporation (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Can Oztoker (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAM
The domain name at issue is <carnivalvista.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 10, 2017; the Forum received payment on July 10, 2017.
On July 10, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <carnivalvista.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2017 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@carnivalvista.com. Also on July 11, 2017, 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.
A timely Response was received and determined to be complete on July 31, 2017.
On August 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a large leisure travel company and operates a popular cruise line. Complainant uses its CARNIVAL and CARNIVAL VISTA marks to promote its business. Complainant has rights in the marks through its registration with the United States Patent and Trademark Office (“USPTO”) (CARNIVAL—e.g., Reg. No. 1,591,384, registered Apr. 10, 1990; CARNIVAL VISTA—Reg. No. 5,041,440, filed June 14, 2013, registered Sept. 13, 2016). See Compl., at Attached Annex C. Respondent’s <carnivalvista.com> (registered October 16, 2014) is identical to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) to the fully incorporated CARNIVAL VISTA mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its CARNIVAL VISTA mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Annex F (WHOIS information). Further, Respondent has failed to make an active use of the domain name’s resolving website. See Compl., at Attached Annex G (displaying “Coming Soon”). An inactive website cannot be considered a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the disputed domain names in bad faith. First, Respondent fails to make an active use of the disputed domain names, and is merely passively squatting. See Compl., at Attached Ex. G. Respondent offered to sell the disputed domain name at a price exceeding the out-of-pocket costs associated with transferring a domain name. An offer to sell an infringing domain name at an excessive price is evidence of bad faith pursuant to Policy ¶ 4(b)(i). Finally, due to the fame of Complainant’s CARNIVAL VISTA mark, Respondent had actual notice of Complainant’s rights in the mark.
B. Respondent
Respondent is in the business of developing software and—pursuant to its business endeavors—registered the disputed domain name as part of its portfolio because of the value associated with the words “Carnival” and “Vista.” Respondent has not made an active use of the domain name because the purpose for registering the domain name was to resell it and make a profit.
Respondent has not acted in bad faith as the domain name incorporates words with inherent value and a generic meaning. Respondent had no knowledge of Complainant or its alleged rights in or to its asserted marks when registering/using the dispute domain name.
C. Additional Submissions
Complainant filed an additional submission pursuant to which it asserted that, the Respondent’s Response to the Complaint (the “Response”), offered a litany of conclusory, unsupported, and irrelevant arguments, none of which is sufficient to avoid the transfer of the domain name, registered well after Complainant registered its CARNIVAL® and CARNIVAL VISTA® trademarks.
More specifically, Complainant asserted that, Respondent’s Response fails to controvert any of the authority cited by Complainant and does little to provide any evidence to negate Complainant’s request to transfer the domain. Instead, Respondent makes broad misstatements regarding the strength of Complainant’s registered trademarks (an argument entirely inapplicable under the Policy)
Complainant’s federal and international trademark registrations create sufficient evidence to suggest willful blindness on the part of Respondent.
Second, Respondent’s registration of CARNIVALVISTA.COM is nothing more than an obvious attempt to trade on the goodwill and notoriety associated with the CARNIVAL® and CARNIVAL VISTA® trademarks.
Moreover, Respondent registered CARNIVALVISTA.COM years after Complainant acquired rights in its distinctive CARNIVAL® and CARNIVAL VISTA® trademarks. Since that time, Respondent has made no legitimate use of the domain name. This failure also evidences Respondent’s bad faith. See Gen Motors Corp. v. Vette Owners, Case No. D2000-0595 (WIPO Oct. 20, 2000)(when a domain name comprised of a genuinely famous mark is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting.).
In sum, Complainant’s Complaint (and supporting Annexes) amply demonstrate that: (i) the domain name registered is identical and confusingly similar to a trademark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Policy, ¶ 4(a). There is an overwhelming basis to support transfer under the Policy. For the reasons discussed in the initial Complaint and further discussed herein, the Panel should grant the relief requested by Complainant and transfer ownership of the disputed domain name to Complainant.
Complainant owns and operates Carnival Cruise Line, the world’s most popular cruise line and largest leisure travel company. See Declaration of Jeffrey Gottlieb, ¶ 3, attached to Complainant’s Complaint as Annex B. For nearly half a century, Complainant has been providing travelers around the globe with extraordinary vacations at an exceptional value. Complainant’s portfolio of global cruise line brands comprise the world’s largest cruise company with a fleet of 101 ships visiting more than 700 ports around the world. Complainant’s 10 cruise line brands attract nearly 11 million guests annually, which is about 50 percent of the global cruise market. Combining more than 200,000 daily cruise guests and 77,000 shipboard employees, more than 277,000 people are sailing aboard Complainant’s fleet every single day, totaling about 80 million passenger cruise days a year.
Respondent is an individual, with no prior registered or unregistered rights regarding the names CARNIVAL VISTA. Respondent attempted to sell to Complainant the domain name in return for remuneration.
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.
Complainant contends it registered its CARNIVAL and CARNIVAL VISTA marks with the USPTO (CARNIVAL—e.g., Reg. No. 1,591,384, registered Apr. 10, 1990; CARNIVAL VISTA—Reg. No. 5,041,440, filed June 14, 2013, registered Sept. 13, 2016). See Compl., at Attached Annex C. Registration with a trademark authority such as the USPTO sufficiently confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Further, rights in a registered mark date back to the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Thus, the Panel finds that Complainant has rights in the CARNIVAL and CARNIVAL VISTA marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <carnivalvista.com> is identical to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) to the fully incorporated CARNIVAL VISTA mark. Domain names that append a gTLD to a fully incorporated mark are considered identical to the mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel holds that Respondent’s <carnivalvista.com> is identical to Complainant’s mark.
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 shifts to Respondent to show it does have 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 asserts that Respondent has no rights or legitimate interests in the <carnivalvista.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CARNIVAL VISTA mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <carnivalvista.com> WHOIS information lists “CAN OZTOKER” as the registrant. See Compl, at Attached Annex F. Therefore the Panel holds that the Respondent is not commonly known by <carnivalvista.com>.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving website is inactive. Inactive websites are not bona fide offerings of goods or services or a legitimate noncommercial or fair use of a domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provided a screenshot of the <carnivalvista.com> resolving website which merely displays the phrase “Coming Soon”. See Compl., at Attached Annex G. Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s offers to sell the disputed domain name is evidence of bad faith. Complainant alleges that Respondent contacted Complainant via email to sell the <carnivalvista.com> domain name. See Compl., at Attached Annex B. Respondent refused to transfer the domain name voluntarily and threatened to sell the domain name to a third party allegedly offering to pay Respondent its $2,000 asking price. Offers to sell domain names for a price that exceeds the cost of out-of-pocket expenses is evidence of bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel holds that Respondent acted in bad faith.
Complainant alleges that Respondent has registered other domain names for the purpose of preventing the owner of a trademark from reflecting the mark in a corresponding domain name. Bad faith is found where a respondent registers and uses a domain name for the purpose of preventing the trademark holder from registering the domain name. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). Here, Complainant has cited two other domain names were allegedly registered by the Respondent, <fifa2019.con> and <fifa21.com>. Complainant contends that these two domain names infringe upon the Federation International de Football Association (FIFA). See Compl., at Attached Annex B. However, the Panel may note that Complainant does not allege that Respondent has been party to any other UDRP decisions or that Respondent has been found to have acted in bad faith under the UDRP in any prior cases. Therefore, the Panel decline to find bad faith on the basis of the following domain names, <fifa2019.con> and <fifa21.com>, for the present case, under Policy ¶ 4(b)(ii).
Complainant additionally argues that Respondent has registered and is using the <carnivalvista.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the CARNIVAL VISTA mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Therefore, the Panel finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent fully incorporated Complainant’s name in the domain name.
Complainant also contends that in light of the fame and notoriety of Complainant’s CARNIVAL VISTA mark, it is inconceivable that Respondent could have registered the <carnivalvista.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s CARNIVAL VISTA mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1988. See Compl., at Attached Annex C. Therefore, due to the fame of Complainant’s mark, the Panel holds that Respondent had actual knowledge of Complainant’s rights when <carnivalvista.com> was registered and subsequently used.
Complainant contends that Respondent is not making an active use of the <carnivalvista.com> resolving webpage. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage is evidence of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant has provided screenshot evidence of the disputed domain name’s inactive resolving webpage. Compl., at Attached Ex. G. Based on this evidence, the Panel finds that Respondent has acted in bad faith 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 <carnivalvista.com> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: August 15, 2017
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