DPP Enterprises, Inc. v. Neil Epstein / Travel Au Natural
Claim Number: FA1308001516504
Complainant is DPP Enterprises, Inc. (“Complainant”), represented by Jason Webb, Utah, USA. Respondent is Neil Epstein / Travel Au Natural (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dreampleasurestours.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2013; the National Arbitration Forum received payment on August 26, 2013.
On August 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dreampleasurestours.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2013 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@dreampleasurestours.com. Also on August 26, 2013, 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 September 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
a. Complainant contends that it has rights in the DREAM PLEASURE TOURS mark, used in connection with travel agency services. Complainant owns a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,105,082 filed July 24, 2011, registered Feb. 28, 2012).
b. Complainant owns common law rights to the term DREAM PLEASURE TOURS predating the registration date of Respondent’s domain name.
c. Respondent’s <dreampleasurestours.com> domain name is confusingly similar to Complainant’s DREAM PLEASURE TOURS mark. The disputed domain name includes Complainant’s mark in its entirety while adding the letter “s” to the word “pleasure.”
d. Respondent does not have rights or legitimate interests in the <dreampleasurestours.com> domain name.
b) Respondent is not commonly known by the disputed domain name. Respondent is operating a business under the name Travel Au Naturel via the disputed domain name.
c) Respondent is using the disputed domain name to offer services similar to those of Complainant’s business.
a. Respondent registered and is using the <dreampleasurestours.com> domain name in bad faith.
b. Respondent agreed to sell the disputed domain name to Complainant as part of a settlement agreement. After Complainant executed its portion of the settlement agreement, Respondent failed to transfer the disputed domain name.
c. Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant and selling Respondent’s travel agency services via the <dreampleasurestours.com> domain name.
d. Respondent had knowledge of Complainant’s DREAM PLEASURE TOURS prior to registering the <dreampleasurestours.com> domain name because Respondent conducts business in the same industry as Complainant and the parties exchanged emails in 2009 in which Complainant ‘s email address utilized the dreampleasuretours.com extension and references its website <dreampleasuretours.com>.
d) Respondent registered the <dreampleasurestours.com> domain name on November 10, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Complainant contends that it has rights in the DREAM PLEASURE TOURS mark, used in connection with travel agency services. Complainant states that it owns a registration with the USPTO for the DREAM PLEASURE TOURS & DESIGN mark (Reg. No. 4,105,082 filed July 24, 2011, registered Feb. 28, 2012). The Panel notes that Respondent’s registration of the disputed domain name predates both Complainant’s filing date and registration date for this trademark registration. In response to Interlocutory Orders, Complainant has provided adequate evidence of common law rights in the DREAM PLEASURE TOURS mark predating Respondent’s domain registration date in the form of profit/loss and advertising expense information. Therefore, the Panel determines that Complainant has rights in the DREAM PLEASURE TOURS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <dreampleasurestours.com> domain name is confusingly similar to Complainant’s DREAM PLEASURE TOURS mark. Complainant notes that the disputed domain name includes Complainant’s mark in its entirety while adding the letter “s” to the word “pleasure.” The Panel finds that the mere addition of an “s” to complainant’s mark does not sufficiently distinguish the disputed domain name from the trademark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <dreampleasurestours.com> domain name is confusingly similar to Complainant’s DREAM PLEASURE TOURS mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant states that Respondent is operating a business under the name Travel Au Naturel via the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Neil Epstein” as the domain name registrant and “Travel Au Naturel” as the registrant organization. Past panels have looked to the WHOIS record and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. Therefore, because neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <dreampleasurestours.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent is using the disputed domain name to offer services similar to those of Complainant’s business. Past panels have found that using a disputed domain name to sell services similar to those offered by the complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <dreampleasurestours.com> domain name to compete with Complainant does not constitute 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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant and selling Respondent’s competing travel agency services via the <dreampleasurestours.com> domain name, which is identical to Complainant’s mark except for the addition of an “s” to pluralize it. Past panels have found such conduct to constitute bad faith registration and use. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those offered by the complainant under its mark). Therefore, the Panel finds that Respondent registered and is using the <dreampleasurestours.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dreampleasurestours.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 8, 2013
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