Pam Plesons v. WhoisGuard c/o WhoisGuard Protected
Claim Number: FA0610000822980
Complainant
is Pam Plesons (“Complainant”), 4616 Via Gennita, Santa Barbara CA
93111. Respondent is WhoisGuard c/o
WhoisGuard Protected (“Respondent”), 8939 S. Sepulveda Blvd., Westchester,
CA 90045.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <familytravel.com>,
registered with Enom, Inc.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum electronically on October 17, 2006; the National Arbitration
Forum received a hard copy of the Complaint on October 17, 2006.
On October 17, 2006, Enom, Inc. confirmed by e-mail to
the National Arbitration Forum that the <familytravel.com> domain
name is registered with Enom, Inc. and that Respondent is the current
registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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 October 30, 2006, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of November 20, 2006 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@familytravel.com by e-mail.
Having received no response from Respondent, the
National Arbitration Forum transmitted to the parties a Notification of
Respondent Default.
On November 27, 2006, pursuant to Complainant's
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the
Administrative Panel (the "Panel") finds that the National
Arbitration 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 National Arbitration 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 <familytravel.com> domain
name is identical to Complainant’s FAMILYTRAVEL.COM mark.
2. Respondent does not have any rights or legitimate
interests in the <familytravel.com> domain name.
3. Respondent registered and used the <familytravel.com>
domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Complainant,
Pam Plesons, purchased the <familytravel.com> domain name on May
11, 2001. Complainant used the disputed
domain name and FAMILYTRAVEL.COM mark since that time in connection with its
online family travel business, until Respondent’s unauthorized acquisition of
the <familytravel.com> domain name. Complainant’s business disseminated literature and information
and helped families book travel plans through the use of the disputed domain
name.
On
or about June 14, 2006, Respondent acquired the <familytravel.com>
domain name without permission or authorization from Complainant. The Panel infers that Respondent’s disputed
domain name resolves to Respondent’s website for the commercial benefit of
Respondent.
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. 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 (Nat. Arb. 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.”).
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.
The
Panel finds that Complainant has acquired sufficient common law rights in the
FAMILYTRAVEL.COM mark through its extensive and continuous Internet presence
since 2001. Complainant has used its mark
to create an online family travel business.
This business has disseminated literature and information and helped
families book travel plans for several years.
Accordingly, the Panel finds that Complainant has demonstrated
sufficient use to acquire common law rights in the mark. See Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA
142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant
established rights in the descriptive RESTORATION GLASS mark through proof of
secondary meaning associated with the mark).
The
Panel further finds that Respondent’s <familytravel.com> domain
name is identical to Complainant’s FAMILYTRAVEL.COM mark under Policy ¶
4(a)(i). See Shirmax Retail
Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar.
20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather
than disjunctive sense in holding that “mere identicality of a domain name with
a registered trademark is sufficient to meet the first element [of the Policy],
even if there is no likelihood of confusion whatsoever”); see also Porto Chico
Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the
panel should resolve whether a mark is identical or confusingly similar “by
comparing the trademark and the disputed domain name, without regard to the
circumstances under which either may be used”).
Complainant
has alleged that Respondent lacks rights or legitimate interests in the <familytravel.com>
domain name. Complainant must first
make a prima facie case in support of its allegations, and the burden
then shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see also Woolworths plc. v.
Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of
preparation to use the domain name for a legitimate purpose, the burden of
proof lies with the respondent to demonstrate that it has rights or legitimate
interests).
Respondent’s
failure to answer the Complaint raises a presumption that Respondent has no
rights or legitimate interests in the <familytravel.com> domain
name. See Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
However, the Panel will now examine the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant
asserts that Respondent is not authorized to use Complainant’s FAMILYTRAVEL.COM
mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information
does not suggest that Respondent is commonly known by the disputed domain name,
and there is no evidence in the record to suggest that Respondent is or has
ever been known by the disputed domain name.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000), the panel found no rights or legitimate interests where the
respondent was not commonly known by the mark and had never applied for a
license or permission from the complainant to use the trademarked name. See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have
rights in a domain name when the respondent is not known by the mark). Accordingly, the Panel finds that Respondent
is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The
Panel finds that Respondent’s lack of rights and legitimate interests under
Policy ¶ 4(a)(ii) is shown through its unauthorized acquisition of the <familytravel.com>
domain name from Complainant.
Complainant contends that Respondent obtained access to Complainant’s
personal e-mail account, discovered Complainant’s password protecting the <familytravel.com>
domain name, and took control of the disputed domain name. There is also no evidence in the record that
Respondent is using the disputed domain name for either 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). See
RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum
Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled
with Respondent’s failure to respond to this dispute, is evidence that
Respondent has no rights or legitimate interests in the domain name pursuant to
Policy 4(a)(ii).”); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan.
18, 2001) (stating that the respondent’s use of the complainant’s entire mark
in domain names makes it difficult to infer a legitimate use).
Complainant
contends that Respondent somehow gained access to Complainant’s e-mail address
through which Respondent was able to obtain Complainant’s password to the
disputed domain name. Respondent then
fraudulently hijacked the <familytravel.com> domain name. Without evidence suggesting otherwise, the
Panel finds that Respondent’s action constitutes bad faith registration and use
under Policy ¶ 4(a)(iii). See Lauri
Bortz d/b/a/ Abaton Book Company v. Pierre Gagne and Sean Bartunek,
D2002-0689 (WIPO Sept. 3, 2002) (finding bad faith where the respondent
apparently hijacked the domain name).
The
Panel further finds that Respondent has acquired the <familytravel.com>
domain name to redirect it to its own website, a use the Panel presumes is for
Respondent’s own commercial benefit.
The disputed domain name is also capable of creating a likelihood of
confusion as to the source and affiliation of Complainant with the disputed
domain name and corresponding website, especially in light of Complainant’s
prior holding of the disputed domain name.
The Panel therefore finds bad faith registration and use under Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the complaint,
it may be concluded that the respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <familytravel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY ( Ret.)
Dated:
December 7, 2006
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