Royal Caribbean
Cruises Ltd. v. Michael Urbanczyk
Claim Number: FA0506000490111
PARTIES
Complainant
is Royal Caribbean Cruises Ltd. (“Complainant”),
represented by Ronald E. Shapiro, of Miles & Stockbridge P.C.,
1751 Pinnacle Dr., Ste. 500, McLean, VA 22102.
Respondent is Michael Urbanczyk (“Respondent”),
represented by Karl S. Kronenberger, of Kronenberger & Associates, 220 Montgomery
Street, Suite 1920, San Francisco, CA 94104.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <royalcaribbeancruiseline.com>,
<royalcaribbeancruiesline.com>
and <royalcaribbeancruieslines.com>,
registered with Network Solutions, Inc.
PANEL
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.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a twice amended Complaint to the National Arbitration Forum
electronically on June 2, 2005; the National Arbitration Forum received a hard
copy of the Complaint on June 6, 2005.
On
June 3, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <royalcaribbeancruiseline.com>,
<royalcaribbeancruiesline.com> and <royalcaribbeancruieslines.com>
are registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
June 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 5,
2005 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@royalcaribbeancruiseline.com, postmaster@royalcaribbeancruiesline.com
and postmaster@royalcaribbeancruieslines.com by e-mail.
A
timely Response was received and determined to be complete on July 5, 2005.
On July 11, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Jacques A. Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends that:
·
The
disputed domain name <royalcaribbeancruiseline.com> is virtually
identical to its registered trademark ROYAL CARIBBEAN CRUISES LTD. Indeed, the addition of the generic term
“line” and the suppression of the generic term “Ltd.” do not detract from the
overall impression of the dominant part ROYAL CARIBBEAN of the domain name
since they are simply descriptive terms.
Moreover, the generic term “line” and “Ltd.” cannot serve as source
identifier or trademarks and do not affect the virtual identity of the domain
name and the mark.
It
further contends that:
·
The <royalcaribbeancruiesline.com>
and the <royalcaribbeancruieslines.com> domain names are
confusingly similar to Complainant’s ROYAL CARIBBEAN and ROYAL CARIBBEAN
CRUISES LTD trademarks since the dominant portion and primary distinctive
element, “royalcaribbean”, corresponds precisely to the Complainant’s trademarks.
Respondent is engaging in typosquatting as the two aforementioned domain names
are misspellings of Complainant famous and distinctive trademark.
·
Respondent
is using <royalcaribbeancruiseline.com> to divert and redirect
Internet users interested in Complainant’s products and services to
Respondent’s site which is apparently a travel agency through which consumers
may book vacations on Royal Caribbean cruise.
Such conduct does not constitute a bona fide offering of goods
and services.
·
Respondent
has not registered any trademarks let alone ROYAL CARIBBEAN CRUISE LINE, ROYAL
CARIBBEAN CRUIES LINE or ROYAL CARIBBEAN CRUIES LINES. Furthermore, Complainant has never licensed
or otherwise authorized Respondent to use ROYAL CARIBBEAN CRUISES LTD trademark. Finally, Respondent has no business
relationship with Complainant and is not affiliated in any way.
·
Respondent
is not making a legitimate noncommercial or fair use of the domain names
without intent for commercial gain since it is misleadingly diverting consumers
to a commercial website and intentionally attracting users through a
misspelling of a famous mark.
·
Respondent’s
registration of the disputed domain names, despite actual and constructive
knowledge of Complainant’s rights in the trademark, is evidence of a bad faith
registration. By linking the disputed
domain name <royalcaribbeancruiseline.com> to a commercial
website, Respondent has also used the domain name in bad faith. Indeed, it is intentionally trying to
attract Internet users to its website for commercial gain by deliberately
causing confusion between its domain name and Complainant’s trademark.
B. Respondent
Respondent
contends that:
·
It does not
dispute the allegation of confusing similarity between the Complainant’s
trademark and the disputed domain name <royalcaribbeancruiseline.com>.
·
As for <royalcaribbeancruiesline.com>
and the <royalcaribbeancruieslines.com>, domain names it submits
that it has registered them in order to capitalize further on the joint
investment of the parties. Respondent’s corporation purchased the latter domain
names representing common misspellings of the primary domain used under the
Agreement on October 10, 2002 and January 20, 2005. The domain name <royalcaribbeancruiesline.com> was
never actually used by the corporation, and to this day, the domain points to
the default Network Solutions landing page.
The <royalcaribbeancruieslines.com> domain name points to
the corporation’s primary domain name, <royalcaribbeancruiseline.com>. Because the domain names are being used
pursuant to the written permission of Complainant, any “confusing similarity”
analysis is simply misplaced, as the use of the trademark in the domain name is
currently intentionally used to identify Complainant as the source of the products
and services sold by Respondent.
·
It also
claims that it should benefit from “first sale doctrine” which limits a
trademark owner’s Lanham Act right to control the distribution of trademarked
goods up to the point of those goods’ first sale. This doctrine insulates a defendant from liability even where
consumers are confused into believing that “the reseller is affiliated with or
authorized by the producer.” In the
current case, Respondent was selling genuine Royal Caribbean goods and
services, with the permission of Complainant, and as a result, the entire
“confusing similarity” analysis is simply misplaced.
·
In this
case, despite the fact that Complainant fails to mention this key fact at any
place in its complaint, Complainant and Respondent have a standing relationship
that is embodied in a written agreement that permits Respondent to use Complainant’s trademarks.
·
The most
important evidence is the written agreement that specifically gives Respondent
the contractual right to use Complainant’s trademarks to sell Royal Caribbean
products and services. Additionally,
there is no prohibition whatsoever in the agreement on Respondent registering
or owning domain names that contain Royal Caribbean trademarks. Respondent had and currently has the right
to use the disputed domain names to fulfill Respondent’s obligations under the
Agreement. This written Agreement and
course of conduct between the parties is compelling evidence of the use of the
domain name in connection with a “bona fide offering of goods and
services”.
·
It has
invested significantly in the disputed domain name, and the website associated
with the domain name is ranked highly in multiple search engines. Respondent also has repeat customers, who
return to its website because Respondent is commonly known by that domain name
to these customers. For these reasons,
Respondent is commonly known by the domain name.
·
Its use of
the domain name has always been a fair use of the name, due to the written
agreement between the parties permitting it to use Complainant’s trademarks to
sell Royal Caribbean cruises. It has
never intended to mislead customers, to divert customers to a site with
competing products or services, or to tarnish the Complainant’s trademarks. Accordingly, it is making a legitimate fair
use of the domain names.
·
Complainant
has failed to show that Respondent acquired the domain name for the purpose of
selling it to Complainant; it has not shown that Respondent registered the
domain in order to prevent Complainant from reflecting its trademark in the
domain name; it has also not shown that Respondent registered the domain name
primarily for the purpose of disrupting the business of a competitor and
finally it has not shown that Respondent intentionally attracted users to the disputed
domain by creating a likelihood of confusion with respect to the source,
sponsorship or affiliation. The
foregoing statements are proved especially by the existence of the written
agreement the parties have agreed upon for the years 2004 and 2005.
·
Respondent
respectfully submits that this is a case of Reverse Domain Name Hijacking and
this Panel should declare in its discretion that the Complaint was brought in
bad faith and constitutes and abuse of the administrative proceeding.
ISSUES
This
dispute involves two entities in the business of selling cruise line
vacations. The Respondent, Michael
Urbanczyk is the sole stockholder of a Florida corporation, Direct Travel
Service, Inc. On February 27, 2002, its corporation
registered the domain name <royalcaribbeancruiseline.com>. In early 2004, Respondent began negotiating an
agreement with the Complainant in order to allow its corporation the right to
sell Royal Caribbean cruises and services and, in doing so, use various Royal
Caribbean trademarks, trade names and logos.
The
first agreement was signed on April 21, 2004, which was retroactive to January
1, 2004. This one-year agreement
between the parties has been renewed once thus far and currently contains a
term that expires in December of 2005.
Surprisingly enough, the Complainant did not address this agreement
issue after receiving Respondent’s response.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the Complainant must prove cumulatively 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
The
test to be applied in order to determine if a Domain Name is “Confusingly
Similar” is one of resemblance based on first impression and imperfect
recollection (Government of Canada v.
David Bedford (May 27, 2003) (BCICAC). As stated by the Panel in that
decision:
For
each Domain Name the Complainant must prove on a balance of probabilities that
a person, on a first impression, knowing the Complainant’s corresponding mark
only and having an imperfect recollection of it, would likely mistake the
Domain Name (without the .ca suffix) for Complainant’s corresponding mark based
upon the appearance, sound or the ideas suggested by the Mark.
Applying the
resemblance test, the Panel finds in the present case, on a balance of
probabilities, that a person, on a first impression, knowing the Complainant’s
ROYAL CARIBBEAN CRUISES LTD mark only and having an imperfect recollection of
it, would likely mistake the <royalcaribbeancruiseline.com>
domain name (without the .com suffix) for the Complainant’s ROYAL CARIBBEAN
CRUISES LTD mark based upon the appearance, sound or the ideas suggested by the
Mark. In this regard, the addition of the word “line” and the suppression of
the word “Ltd” is not sufficient to distinguish the Disputed Domain Name <royalcaribbeancruiseline.com> in
appearance, sound or idea suggested from the ROYAL CARIBBEAN CRUISES LTD Mark.
In addition, the Complainant asserts that Respondent’s <royalcaribbeancruiesline.com> and <royalcaribbeancruieslines.com>
domain names are confusingly similar to Complainant’s ROYAL CARIBBEAN and
ROYAL CARIBBEAN CRUISES LTD. marks because Respondent intentionally misspells
Complainant’s famous marks. In Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000), the Panel found that, by misspelling words and adding letters to words,
a respondent does not create a distinct mark but nevertheless renders the
domain name confusingly similar to complainant’s marks. Also in Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000), the Panel held that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such “generic” typos do not change
respondent’s infringement on a core trademark held by the complainant.
Furthermore,
the Panel finds that the addition of the top-level domain “.com” is irrelevant
in determining whether the <royalcaribbeancruiseline.com>, <royalcaribbeancruiesline.com>
and <royalcaribbeancruieslines.com> domain names are confusingly
similar to Complainant’s marks. In Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000), the Panel decided that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar.
Notwithstanding the preceding
arguments, the Respondent did not contest the confusing similarity between the
disputed domain names and the Complainant’s trademarks.
For these
reasons, the Panel Finds that the disputed domain names <royalcaribbeancruiseline.com>,
<royalcaribbeancruiesline.com> and <royalcaribbeancruieslines.com>
are confusingly similar to Complainant’s marks ROYAL CARIBBEAN and ROYAL
CARIBBEAN CRUISES LTD.
From the facts of this case, it is certainly not clear
whether or not Respondent had rights in the domain name at the time of
registration. However, what is clear is
that Respondent cannot derive legitimate interest from the signing of the
contract with Complainant as this clearly prohibited by section 8 (I) of the
contract.
The question which remains is whether Respondent had
nonetheless legitimate interest in the respect of the exploitation of the
domain name at relevant time. While literally it may; indeed, it did not
propose to directly conduct business under the name, it expected to use the domain
name <royalcaribbeancruiseline.com> to derive legitimate income
from persons who wanted to purchase Complainant’s products.
However, the Panel does not propose to belabour that
point nor make a finding as to whether or not Complainant has met its burden in
view of the Panel’s finding hereinafter on bad faith.
It
is most of the time quite difficult, if not impossible, to actually show bad
faith, at the time of registration and use, with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some
evidence pointing in that direction, it is then incumbent upon Respondent to either respond or
explain why its conduct should not be assimilated to bad faith. The Panel’s understanding of the Policy is
that although the initial burden to prove Respondent’s bad faith in the registration and the use of the
disputed domain name relies squarely on the shoulders of Complainant, such obligation is only
to make out a prima facie case, and
once it has done so, it is then incumbent upon Respondent to either justify or explain its business conduct (if
not to demonstrate the contrary). Failure to do so will, in some circumstances,
enable the Panel to draw a negative inference.
However, in the case at hand, the Panel finds that
Complainant has not satisfactorily met its burden as to bad faith at least as
far as use is concerned, as low as that primary threshold might be put. Indeed, Respondent having shown that at the
time of the complaint, he is a contractually authorized distributor of
Complainant’s product; the latter is therefore, prima facie, precluded
from claiming that Respondent’s registration and use of the disputed domain
name constitutes bad faith, unless he can show circumstances that warrant
it. The Panel relies on Celebrity Signatures Int’l,
Inc. v. Hera’s Inc. Iris Linder, D2002-0936 (WIPO Dec. 16, 2002), wherein there was a finding of
lack of bad faith since respondent “intended to use the domain name for a
website selling Complainant's products, [it] was encouraged to do so by
Complainant's representatives, [and it] did so for over a year without [the
complainant’s] objection”. See also Vanden Bos v. Proxyone Domain
Trust, FA 170632 (Nat. Arb. Forum Sept.
10, 2003) where “Complainant knew from 1997 that Respondent used and promoted
the <fusac.com> domain name in the United States and Complainant cannot
show bad faith registration because Complainant approved Respondent's
registration of the mark in a domain name, acquiesced to it and received the
benefits from it.”
Of course in the present
case, it cannot be said that Complainant has either encouraged Respondent to
use the domain name nor that he could have shown circumstances warranting bad
faith. However, as the burden rests
squarely on Complainant’s shoulders, the Panel is of the view that Complainant
could not disregard, once alleged and proved by Respondent, the written
agreement that intervened between the parties; such inaction is fatal to
Complainant’s burden on the issue of bad faith.
Respondent’s allegation “Prior to the parties signing the agreement, Direct Travel
disclosed how it planned to use the domain name royalcaribbeancruiseline.com in
fulfilling Direct Travel’s obligations under the agreement, and at no time did
any of the Royal Caribbean representatives voice any objection to such use of
this domain name” (Response p.3) was never contradicted and no attempts were
made by Complainant to even address it.
For reasons unexplained, Complainant chose to ignore it. The uncontradicted evidence of Respondent is
that Complainant has taken over a year to
object to the Respondent’s open and continuous business use of the domain name <royalcaribbeancruiseline.com>. Last but
not least, the fact that Complainant appears to have financially benefited from
the use of the domain name by Respondent points in the opposite direction to
bad faith. For these reasons, the Panel
draws a negative inference from both the inaction of Complainant during one
year as well as the silence of Complainant in not rebutting Respondent.
Noteworthy,
Complainant has failed to point out any particular facts or circumstances
supporting its allegations of bad faith, thus making it difficult for the Panel
to make a finding in its favor, on a balance of probabilities. Had Complainant’s evidence been more
complete in its complaint or with a rebuttal, the Panel may have come to a
different conclusion. See Graman USA
Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16,
2003) were the Panel found that general allegations of bad faith without
supporting facts or specific examples do not supply a sufficient basis upon
which the panel may conclude that respondent acted in bad faith.
For
all of these reasons, the Panel finds that the Complainant has failed to meet
its burden, on a balance of probabilities, that Respondent has used the
disputed domain names <royalcaribbeancruiseline.com>, <royalcaribbeancruiesline.com>
and <royalcaribbeancruieslines.com> in bad faith.
Complainant
having failed to prove one prong of the third criterion required by section 4
(a)(iii) of the Policy, there is no need for the Panel to pursue its inquiry as
to the second prong nor the criterion required by section 4 (a)(ii) (Ricom, Inc. v. Ricom,
FA 348012 (Nat. Arb. Forum Dec. 16, 2004).
Reverse Domain Name Hijacking
Respondent has asked the Panel to make a finding of
reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as
"using the Policy in bad faith to attempt to deprive a registered domain
name holder of a domain name." See
also Rule 15(e). To prevail on
such a claim, Respondent must show that Complainant knew of Respondent’s
unassailable right or legitimate interest in the disputed domain name or the
clear lack of bad faith registration and use, and nevertheless brought the
Complaint in bad faith. See, e.g.,
Sydney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224
(WIPO, Oct. 31, 2000). Furthermore, the Panel shares the opinion expressed by
the panel in Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct.
18, 2000), that, "reverse Domain Name hijacking…encompasses both intent and recklessness or knowing
disregard of the likelihood that the Respondent possessed legitimate
interests".
In the case at hand, it is apparent that Respondent other than simply stating
that a situation of reverse domain name hijacking is present has failed to
establish any of the above-mentioned criteria and/or provided evidence in
support of said request. Consequently, the Respondent has failed to relieve
itself of its burden regarding this notion and no finding of reverse domain
name hijacking, against Complainant, is to be made.
Re-Filing
In
Creo Products Inc. v. Website In Development, D2000-1490 (WIPO
Jan. 19, 2001), the Panel thoroughly explained what constitutes a re-filed
complaint. In essence, it consists of a
subsequent complaint in relation to the same domain name that is filed by the
same Complainant against the same Respondent.
Reflecting on the absence of direction in the Uniform Policy and the
Uniform Rules, the Panel concludes that the applicability of the Uniform Policy
to re-filed complaints should be resolved in a reasonable, yet logical
manner. This Panel’s view is that
re-filed complaints ought to only be permitted in very limited circumstances.
The
Panel in Creo noted that “there may be situations in which an
administrative panel considers that the complainant has not proved that the
complaint satisfies all the requirements of the Uniform Policy, but that it is
highly likely the complainant could do so upon the submission of further
arguments and/or evidence. In this
situation, it appears to this Administrative Panel that, rather than dismissing
the complaint without prejudice, the better approach is to utilize the
provisions of Rule 12 of the Uniform Rules, and request further statements
and/or documents from either or both the parties.”
In
the present case, the Panel exercises its discretion not to retain the argument
pertaining to Rule 12 as the Complaint is so deficient as to bad faith, particularly
relatively to the contractual issue raised by Respondent, that it would not be
practical for the Panel to presently request further statements. However, the Panel retains the solution
adopted in Not My Kid Inc. v. Ron Sawchak, FA167978 (Nat. Arb. Forum
Sept. 23, 2003). In view of the
circumstances of the present case, the Panel therefore reserves the rights of
Complainant to re-file with substantially new or different evidence but leaves
it for another Panel to decide.
Of
course, this decision on re-filing does not prevent Complainant’s right to alternatively
seek remedies before other jurisdictions.
DECISION
The
Complainant has failed to satisfactorily established on a balance of
probabilities at least one prong of the third element required under the ICANN
Policy, i.e use in bad faith in respect of the domain names <royalcaribbeancruiseline.com>,
<royalcaribbeancruiesline.com> and <royalcaribbeancruieslines.com>
with Complainant’s ROYAL CARIBBEAN and ROYAL CARIBBEAN CRUISES LTD marks.
Consequently,
pursuant
to paragraphs 4(a)(iii) of the Policy and 15 of the Rules, the Panel concludes that relief sought
shall be DENIED, but in view of reasons outlined above, reserves all of
Complainant’s rights in re-filing before a newly constituted Panel.
The
Respondent having failed to meet the necessary burden, his claim for a finding
in reverse domain name hijacking is DENIED.
Jacques A. Léger, Q.C., Panelist
Dated: July 29, 2005
National
Arbitration Forum
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