Carnival Corporation v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1811001815769
Complainant is Carnival Corporation (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carnivalradiance.com>, 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 here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 9, 2018; the Forum received payment November 9, 2018.
On November 12, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <carnivalradiance.com> 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 November 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2018, 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@carnivalradiance.com. Also on November 13, 2018, 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 December 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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 issues 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’s Allegations in this Proceeding:
Complainant owns and operates Carnival Cruise Line, the world’s most popular cruise line and largest leisure and travel company. Complainant offers a wide range of vacation experiences for millions of guests with varied leisure-time preferences from multiple backgrounds, cultures and languages. Complainant has rights in the CARNIVAL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,591,384, registered Apr. 10, 1990). See Compl. Annex C. Complainant has also applied to register the CARNIVAL RADIANCE mark with the USPTO (Ser. No. 88,155,359, filed Oct. 15, 2018). Respondent’s <carnivalradiance.com> domain name is identical or confusingly similar to Complainant’s CARNIVAL and CARNIVAL RADIANCE marks as it fully incorporates the marks and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <carnivalradiance.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant did not authorize, license, or otherwise permit Respondent to use the mark. See Compl. Annex F (WHOIS information). Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, Respondent makes no use of the resolving webpage associated with the infringing domain name. See Compl. Annex G. Further, the domain name resolves to a webpage advertising that the domain name is for sale. Id.
Respondent registered and uses and/or passively holds for sale the <carnivalradiance.com> domain name and Respondent does so in bad faith as Respondent offers to sell the domain name on the resolving webpage. See Compl. Annex G. Additionally, Respondent intentionally attempted to attract, for commercial gain, internet users to Respondent’s website and to commercially benefit from the goodwill of Complainant’s famous CARNIVAL marks. Further, Complainant’s longstanding use of the CARNIVAL marks and corresponding domain names suggests that Respondent was aware of Complainant’s preexisting rights when it registered the <carnivalradiance.com> domain name.
Respondent’s Allegations in this Proceeding:
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <carnivalradiance.com> domain name October 15, 2018, some twenty-eight years after Complainant’s registration. See Compl. Ex. F.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered and used and/or passively held a disputed domain name containing Complainant’s protected mark in its entirety and the disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used and/or passively held the disputed domain name and offered it for sale 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(f), 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 (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 has rights in the CARNIVAL mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,591,384, registered Apr. 10, 1990). See Compl. Annex C. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant established rights in the CARNIVAL mark for the purposes of Policy ¶ 4(a)(i).
Complainant also claims rights in the CARNIVAL RADIANCE mark through its trademark application filed with the USPTO (Ser. No. 88,155,359, filed Oct. 15, 2018). See Compl. Annex C. Mere trademark applications, however, are generally insufficient to confer rights in a mark for the purposes of Policy ¶ 4(a)(i). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant is in the process of completing establishment of rights in the CARNIVAL RADIANCE mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <carnivalradiance.com> domain name is identical or confusingly similar to Complainant’s CARNIVAL and CARNIVAL RADIANCE marks as it fully incorporates the marks and adds the “.com” gTLD. Similar changes in a complainant’s mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from the mark under Policy ¶ 4(a)(i).”). Further, analysis of the confusing similarity of the domain name to the CARNIVAL mark, including the potentially generic term “radiance” would show a failure to distinguish the disputed domain name from Complainant’s mark.. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <carnivalradiance.com> domain name is identical or confusingly similar to the CARNIVAL and/or CARNIVAL RADIANCE marks under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s family of CARNIVAL marks; 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), then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <carnivalradiance.com> domain name. Where no response is filed, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “Super Privacy Service LTD c/o Dynadot” as the registrant. See Compl. Annex F. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CARNIVAL and/or CARNIVAL RADIANCE marks. Panels may use these assertions as evidence that a party lacks rights or 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and that Complainant has not given Respondent permission to use the marks in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <carnivalradiance.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent makes no use of the resolving webpage associated with the infringing domain name. Failure to make active use of a confusingly similar domain name can evidence a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). 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).”). Complainant provides a screenshot of the resolving webpage, which appears to be hosted by <undeveloped.com> and only contains an offer to sell the domain name for $988.00. See Compl. Annex G. Accordingly, the Panel finds that Respondent fails to make any substantive use of the domain name, fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), and fails to make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that the domain name resolves to a webpage advertising that the domain name is for sale. Offering a confusingly similar domain name for sale can evidence a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Respondent lists the domain name for sale on the resolving webpage for $988.00. See Compl. Annex G. For these reasons, the Panel agrees and finds that Respondent offers the disputed domain name for sale, which permits findings that Respondent has no rights or legitimate interests for the purposes of Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that 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 claims that Respondent registered and uses the <carnivalradiance.com> domain name in bad faith as Respondent offers to sell the domain name on the resolving webpage. Offering a confusingly similar domain name for sale can evidence bad faith under Policy ¶ 4(b)(i). 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).”). The Panel is reminded that Respondent lists the domain name for sale on the resolving webpage for $988.00. See Compl. Annex G. Accordingly, the Panel uses Respondent’s offering of the domain name for sale as evidence of bad faith under a Policy ¶ 4(b)(i) analysis.
Next, Complainant claims that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website and commercially benefit from the goodwill of Complainant’s famous CARNIVAL marks. Using a disputed domain name that trades upon the goodwill of a complainant, even where the resolving webpage is inactive, can evidence bad faith under Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel notes that the resolving webpage associated with the disputed domain name contains an offer to sell the domain name with no other content. See Compl. Annex G. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the CARNIVAL marks at the time of registering the <carnivalradiance.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evidence 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). Complainant contends that Complainant’s longstanding use of the CARNIVAL marks and corresponding domain names suggests that Respondent knew of Complainant’s preexisting rights when it registered the <carnivalradiance.com> domain name. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held the disputed domain name, offering it for sale for an amount that is presumed to be greater than its initial costs, and that Respondent acted 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 <carnivalradiance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 19, 2018
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