Trans Global Tours, LLC v. Yong Li
Claim
Number: FA0309000196166
Complainant is Trans Global Tours, LLC, Milwaukee, WI
(“Complainant”) represented by Brian G.
Gilpin, of Godfrey & Kahn, S.C., 780 North Water Street, Milwaukee, WI 53202 Respondent is Yong Li,
PO Box 904, Beijing, China, 100029 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <transglobalvacations.com>, registered
with iHoldings.com, Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 18, 2003; the Forum received a hard copy of the
Complaint on September 18, 2003.
On
Sepember 22, 2003, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <transglobalvacations.com>
is registered with iHoldings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the iHoldings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
September 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 13, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@transglobalvacations.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
October 20, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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."
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 makes the following assertions:
1. Respondent’s <transglobalvacations.com>
domain name is confusingly similar to Complainant’s TRANS GLOBAL VACATIONS
mark.
2. Respondent does not have any rights or
legitimate interests in the <transglobalvacations.com> domain
name.
3. Respondent registered and used the <transglobalvacations.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the TRANS GLOBAL VACATIONS mark (Reg. No. 2,305,504, registered on
February 26, 2002) related to travel services for individuals, companies, and
families. Complainant operates a website
located at the <tgvacations.com> domain name.
Respondent
registered the <transglobalvacations.com> domain name on July 28,
2002. Respondent is using the disputed
domain name to redirect Internet users to <usseek.com>, an Internet
search engine with pop-up advertisements.
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."
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.
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 has
established rights in the TRANS GLOBAL VACATIONS mark through registration with
the USPTO and continuous use of the mark since at least 2000.
Respondent’s
<transglobalvacations.com> domain name is identical to
Complainant’s TRANS GLOBAL VACATIONS mark because it incorporates Complainant’s
entire mark and merely omits the spaces between the words. A lack of a space in a domain name does not
substantially distinguish it from a mark spelled similarily. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25,
2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark); see also Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark). Thus, the <transglobalvacations.com>
domain name does not overcome a Policy ¶ 4(a)(i) analysis.
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden shifts to Respondent to show that it has rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the disputed domain name to divert Internet users to an Internet search
engine with pop-up advertisements. This
type of use is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12,
2003) (finding that Respondent did not have rights or legitimate interests in a
domain name that used Complainant’s mark and redirected Internet users to
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks).
Respondent has
not come forward with any evidence to establish that it is commonly known as
TRANS GLOBAL VACATIONS or <transglobalvacations.com>. As a result, the Panel infers that
Respondent has no rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain name to divert Internet users to <usseek.com>,
an Internet search engine. The Panel
infers that Respondent is making a profit from the Internet traffic that is
diverted to this website. Respondent is
therefore using a domain name identical to Complainant’s mark to create Internet
user confusion for its own commercial benefit, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Bank of America Corp. v. Out Island Props., Inc., FA 154531
(Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names
contain entire versions of Complainant’s marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
Complainant would become confused as to Complainant’s affiliation with the
resulting search engine website” in holding that the domain names were
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Complainant’s TRANS GLOBAL VACATIONS mark is distinctive. See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption). Registration of a domain
name identical to Complainant’s mark, despite actual knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <transglobalvacations.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
November 1, 2003
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