CHEAPCARIBBEAN.COM, INC. v. Venkateshwara Distributor Private Limited.
Claim Number: FA1205001444422
Complainant is CHEAPCARIBBEAN.COM, INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcheapcaribbean.com>, registered with Tirupati Domains & Hosting Private Limited.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2012; the National Arbitration Forum received payment on May 16, 2012.
On May 18, 2012, Tirupati Domains and Hosting Private Limited. confirmed by e-mail to the National Arbitration Forum that the <wwwcheapcaribbean.com> domain name is registered with Tirupati Domains & Hosting Private Limited. and that Respondent is the current registrant of the name. Tirupati Domains & Hosting Private Limited. has verified that Respondent is bound by the Tirupati Domains & Hosting Private Limited. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2012 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@wwwcheapcaribbean.com. Also on June 5, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant made the following contentions.
1. Complainant registered the CHEAPCARIBBEAN.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,316,639 filed February 7, 2007 registered October 23, 2007);
2. Complainant’s first use of the CHEAPCARIBBEAN.COM mark was on December 10, 2000;
3. Complainant has provided online travel and resort vacation packages to the Caribbean and Mexico since the first use of the mark;
4. Complainant has generated $100,000,000 in revenue since 2000;
5. Complainant registered the <cheapcaribbean.com> domain name on March 28, 2001;
6. Respondent’s <wwwcheapcaribbean.com> domain name is confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark;
7. Respondent has engaged in typosquatting;
8. Respondent has no rights or legitimate interests in the disputed domain name.
9. Respondent has not been commonly known by the disputed domain name;
10. Respondent is not affiliated with Complainant in any way;
11. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name;
12. The disputed domain name has been registered and is being used in bad faith;
11. Respondent resolves the disputed domain name to a pay-per-click website, where some of the links offered resolve to Complainant’s competitors;
12. Respondent registered the disputed domain name on October 28, 2005;
13. Respondent is taking advantage of Complainant’s well-known mark for its own commercial gain;
14. Respondent is a serial cybersquatter and has been subject to previous adverse UDRP proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in providing online travel and resort vacation packages to the Caribbean and Mexico;
2. Complainant registered the CHEAPCARIBBEAN.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,316,639 filed February 7, 2007 registered October 23, 2007); Complainant has also established common law trademark rights to the CHEAPCARIBBEAN.COM mark dating from December 10, 2000.
3. Respondent registered the <wwwcheapcaribbean.com> domain name on October 28, 2005; Respondent resolves the disputed domain name to a pay-per-click website, where some of the links offered resolve to Complainant’s competitors.
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 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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it registered the CHEAPCARIBBEAN.COM mark with the USPTO (Reg. No. 3,316,639 filed February 7, 2007 registered October 23, 2007). Complainant submits a printout from the USPTO to support its assertion. See Complainant’s Exhibit H. As the Panel finds that Complainant registered the CHEAPCARIBBEAN.COM mark, the Panel concludes that Complainant established rights in the mark under Policy ¶ 4(a)(i) dating back to the filing date of the application for registration, February 7, 2007. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also asserts that it has established common law rights dating back to 2000. Complainant states that its first use of the CHEAPCARIBBEAN.COM mark was on December 10, 2000. Complainant also states that it has provided online travel and resort vacation packages to the Caribbean and Mexico since its first use. Complainant claims to have generated $100,000,000 in revenue since 2000. Complainant also claims to have registered the <cheapcaribbean.com> domain name on March 28, 2001. The Panel finds that Complainant established its rights in the CHEAPCARIBBEAN.COM mark under Policy ¶ 4(a) (i) dating back to December 10, 2000 through its continuous and ongoing use. See Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second question is whether the disputed domain name is identical or confusingly similar to the CHEAPCARIBBEAN.COM mark. In that regard,
Complainant argues that Respondent’s <wwwcheapcaribbean.com> domain name is confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark. Complainant states that Respondent’s disputed domain name includes the entire mark, merely removing the period that traditionally lies between the “www” and the rest of the domain name. The Panel finds that Respondent failed to differentiate the <wwwcheapcaribbean.com> domain name from Complainant’s CHEAPCARIBBEAN.COM mark in such a way as to remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a) (i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that 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) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHEAPCARIBBEAN.COM mark and to use it in its domain name, merely removing the period that traditionally lies between the “www” and the rest of the domain name, thus retaining the confusing similarity that arises between the domain name and the trademark.
(b) Respondent has then decided to use the domain name so that it resolves
to a pay-per-click website, where some of the links offered resolve to Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also contends that Respondent has not been commonly known by the disputed domain name. Complainant states that Respondent is not affiliated with Complainant in any way. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Venkateshwara Distributor Private Limited.” The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
(e) Complainant also submits that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent resolves the disputed domain name to a pay-per-click website, where some of the links offered resolve to Complainant’s competitors, like Kayak and Disney Vacations. Previous panels have held that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c) (iii).
(f) Complainant also asserts that Respondent has engaged in typosquatting. Complainant states that Respondent merely removed the period between the “www” and the rest of the domain name to form the disputed domain name. As the Panel finds that Respondent engaged in typosquatting, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has established a pattern of infringing registrations. Complainant submits evidence of prior disputes that Respondent has been involved in to support its submission. See Williams-Sonoma, Inc. v. Venkateshwara Distributor Private Ltd., FA 1361215 (Nat. Arb. Forum Jan. 6, 2011); see also Enterprise Holdings, Inc. v. Venkateshwara Distributor Private Ltd., FA 1409674 (Nat. Arb. Forum Oct. 28, 2011); see also GHC Specialty Brands, LLC v. Venkateshwara Distributor Private Ltd., FA 1367041 (Nat. Arb. Forum Feb. 28, 2011). Based upon these prior proceedings, the Panel concludes that Respondent has established a pattern of infringing registrations, which the Panel finds demonstrates bad faith registration and use under Policy ¶ 4(b) (ii) in the instant proceedings. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b) (ii).”).
Secondly, Complainant also alleges that Respondent is taking advantage of Complainant’s well-known mark for its own commercial gain. Complainant states that Respondent resolves the disputed domain name to a pay-per-click website, which offers links to Complainant’s competitors, including Kayak and Disney Vacations. The Panel infers that Respondent collects click-through fees when Internet users utilize one of the links offered. As the Panel concludes that Respondent is attempting to gain commercially by getting Internet users to click on one of the links offered from its website through confusion as to Complainant’s involvement with the website, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, Complainant asserts that Respondent has engaged in typosquatting. Complainant states that Respondent removed the period between the “www” and the rest of what would traditionally form a domain name to form the disputed domain name. As the Panel finds that Respondent engaged in typosquatting, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a) (iii)).
Having regard to the submissions of Complainant and the evidence submitted on its behalf, the Panel also finds that in addition to the manner in which the disputed domain name falls within the provisions of Policy ¶ 4(b), Respondent has registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwcheapcaribbean.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 28, 2012
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