Grounded Nomads, LLC d/b/a
Vocation Vacations v. Texas International Property Associates-NA NA
Claim Number: FA0706000999659
PARTIES
Complainant is Grounded Nomads, LLC d/b/a Vocation Vacations (“Complainant”), represented by Anthony
McNamer, of McNamer and Company PC, 519 SW 3rd
Ave., Suite 601, Portland, OR 97204.
Respondent is Texas International Property Associates- NA NA (“Respondent”), represented by Gary
Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vocationsvacations.com>, registered
with Compana,
LLC.
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.
Hon. Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On June 18, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <vocationsvacations.com> domain name
is registered with Compana, LLC and that
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 20, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 10, 2007 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@vocationsvacations.com by e-mail.
A timely Response was received and determined to be complete on July 10, 2007.
On July 18, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that the <vocationsvacations.com> domain name is identical in sight, sound and
meaning as Complainant’s registered trademarks VOCATIONVACATION and
VOCATIONVACATIONS and its registered domain names <vocationvacation.com>
and <vocationvacations.com>. The <vocationsvacations.com>
domain name is literally only
one letter away from Complainant’s urls and marks. Respondent is an organization called Texas
International Property Associates.
Respondent does not do business as VOCATIONS VACATIONS. It registered the name <vocationsvacations.com> on
March 19, 2005, five years after Complainant’s first filing with the U.S.
Trademark Office and two years after registering the <vocationvacation.com>
domain name. In other words, Respondent
began using a domain name nearly identical to Complainant’s mark
well after the mark became associated with Complainant. Respondent has neither applied for nor
obtained a trademark registration for VOCATIONSVACACTIONS.
B. Respondent
In Response, Respondent argues that the disputed domain name is made up
of the plural form of two generic and descriptive words to which no one party
has exclusive rights, “vocations” and “vacations.” These are two common dictionary words with
multiple meanings. “Vocation,” for
example, can mean merely an occupation or can mean the more specific meaning of
“a divine call to the religious life.” Likewise “vacation” can mean a respite from
work or the more rarely used act of vacating a premises. Thus the domain could well mean a respite
from work.
FINDINGS
The Panel finds that the <vocationsvacations.com> domain name is confusingly similar
to the VOCATIONVACATION mark as the disputed domain name contains Complainant’s
mark in its entirety. The Panel also finds that the <vocationsvacations.com> domain name is identical to the
VOCATIONVACATIONS mark. The Panel finds
that Respondent lacks any rights or legitimate interest in the disputed domain name
and has registered and used it in bad faith.
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 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;
(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 the trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,836,771 issued April 27, 2004) establishes Complainant’s rights in the VOCATIONVACATION mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."). Complainant also has rights in the VOCATIONVACATIONS mark through a trademark registration with the USPTO (Reg. No. 3,192,534 issued January 2, 2007, filed November 30, 2005). Respondent registered the <vocationsvacations.com> domain name on March 19, 2005, which predates Complainant’s registration of the VOCATIONVACATIONS mark and its application filing date with the USPTO for the mark. However, the Panel holds that the registration date of the mark does not matter, because Complainant has established secondary meaning in the mark through continuous and extensive use of the mark, therefore conveying common law rights, since it has used the VOCATIONVACATIONS mark since January 2003 in connection with its various travel services. The Panel finds that Complainant has thus established rights in the VOCATIONVACATIONS mark pursuant to Policy ¶ 4(a)(i). See Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)); see also 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).
The Panel finds
that the <vocationsvacations.com> domain
name is confusingly similar to the
VOCATIONVACATION mark under Policy ¶ 4(a)(i) as the disputed domain name
contains Complainant’s mark in its entirety, with the addition of the letter
“s” to the end of the mark, as well as the addition of the generic top-level
domain (“gTLD”) “.com.” Such small
alterations to Complainant’s mark do not negate the confusing similarity
between Complainant’s mark and Respondent’s disputed domain name. See
Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan.
11, 2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar,
because top-level domains are a required element of every domain name.”). The
Panel also finds that the <vocationsvacations.com> domain name
is identical to the VOCATIONVACATIONS mark under Policy ¶ 4(a)(i) as the
disputed domain name contains Complainant’s mark in its entirety with the
addition of the gTLD “.com.” Previous
panels have held, and this Panel finds, that the addition of a gTLD is
insignificant when conducting a Policy 4(a)(i)
analysis, as a top-level domain is a requirement of all domain names. See Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Victoria's Secret v.
Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to the complainant’s BODY
BY VICTORIA mark). While Respondent contends that the <vocationsvacations.com>
domain name is comprised of common,
descriptive terms and as such cannot be found to be identical to Complainant’s
mark, the Panel finds that such a determination is not necessary under Policy ¶
4(a)(i) as this portion of the Policy considers only whether Complainant has
rights in the mark and whether the disputed domain name is identical or
confusingly similar to Complainant’s mark.
The Panel finds that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that 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, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is not commonly known by the <vocationsvacations.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information lists Respondent as “Texas International Property Associates-NA NA” and there is no evidence that Complainant has authorized Respondent to use its mark in any way. The Panel finds that Respondent is not commonly known by the disputed domain name under the parameters of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant asserts that Respondent is using the <vocationsvacations.com>
domain name to host a website that
displays hyperlinks to various third-party websites in direct competition with
Complainant. The Panel finds that such
use does not qualify as 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 TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the
respondent’s use of the disputed domain name to host a series of hyperlinks and
a banner advertisement was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Respondent is benefiting from the likelihood of
confusion between Complianant’s mark and Respondent’s disputed domain name for
commercial gain, and has therefore demonstrated bad faith registration and use
under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is
<century21.com>, many Internet users are likely to use search engines to
find Complainant’s website, only to be mislead to Respondent’s website at the
<century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered
and used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent). Respondent is presumably benefiting from its use of the disputed domain
name by displaying hyperlinks to third-party websites on the website that
resolves from the <vocationsvacations.com> domain name.
Moreover, the
Panel finds that the use of the <vocationsvacations.com> domain name to display hyperlinks that offer goods and
services in direct competition with Complainant constitues a disruption of
Complainant’s business and is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See EBAY, Inc. v.
MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vocationsvacations.com> domain name
be TRANSFERRED from Respondent to Complainant.
Honorable
Nelson A. Diaz
(ret), Panelist
Dated: August 1, 2007
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