Online Vacation Center, Inc. v. Andre Little / Andre Little, P.A.
Claim Number: FA1409001578652
Complainant is Online Vacation Center, Inc. (“Complainant”), represented by Scott Smiley of The Concept Law Group, P.A., Florida, USA. Respondent is Andre Little / Andre Little, P.A. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <online-vacation-center.com>, <onlinevacationcenter.net>, <online-vacation-center.net>, <onlinevacationcenter.org>, and <online-vacation-center.org>, registered with GODADDY.COM, LLC.
The undersigned, Daniel B. Banks, Jr., certifies that he and the other panelists have acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2014; the National Arbitration Forum received payment on September 8, 2014.
On September 8, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <online-vacation-center.com>, <onlinevacationcenter.net>, <online-vacation-center.net>, <onlinevacationcenter.org>, and <online-vacation-center.org> domain names are 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 September 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2014 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@online-vacation-center.com, postmaster@onlinevacationcenter.net, postmaster@online-vacation-center.net, postmaster@onlinevacationcenter.org, postmaster@online-vacation-center.org. Also on September 12, 2014, 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.
A timely Response was received and determined to be complete on October 2, 2014.
On October 9, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sandra J. Franklin, Paul M. DeCicco and Daniel B. Banks, Jr., as Panelists.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the ONLINE VACATION CENTER mark through assignment of the registered mark (US Reg. No. 2,715,064 registered May 13, 2003). Complainant uses the mark in furtherance of its business offering travel agency services including vacation packages, cruises, tours, airfare and hotel reservations, and other similar travel related services. Complainant’s online operation is directed through <onlinevacationcenter.com>, which it has used since its registration on September 28, 2000. The <online-vacation-center.com>, <onlinevacationcenter.net>, <online-vacation-center.net>, <onlinevacationcenter.org>, and <online-vacation-center.org> domain names are confusingly similar to the ONLINE VACATION CENTER mark.
Respondent lacks any rights in the disputed domain names. Complainant shares no affiliation with Respondent. Further, Complainant is not commonly known by the disputed domain name as demonstrated by the WHOIS record. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Respondent uses the disputed domain names in connection with pages advertising travel services that are identical to those offered by Complainant. This is an attempt to divert Internet uses from Complainant’s website to Respondent’s apparently comparable offerings. The domain name <onlinevacationcenter.org> is inactive and therefore similarly fails to fall within the protections of the Policy.
Respondent should be found to have registered and used the domain names in bad faith. By resolving the disputed domain names to promote competing travel agency services, Respondent is disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii). Further, Respondent is attempting to mislead Internet users into associating Respondent’s offerings with Complainant’s established goodwill in an effort to commercially benefit. In addition, the <onlinevacationcenter.org> domain name is not used in connection with an active website, which viewed under the totality of the circumstances, is further evidence of bad faith.
All disputed domain names were registered July 18, 2014.
B. Respondent
Respondent is planning a business called “Online Vacation Center,” which has been registered with the Florida Department of State. Respondent’s business emphasis is on making online travel memberships available. Respondent uses the disputed domain names to generate traffic to Respondent’s official webpage, where such travel services are provided.
1 - The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interest in respect of the domain names.
3 - The disputed domain names have been registered and are being used in bad faith.
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.
Complainant uses the ONLINE VACATION CENTER mark in furtherance of its business offering travel agency services including vacation packages, cruises, tours, airfare and hotel reservations, and other similar travel related services. Complainant claims rights in the ONLINE VACATION CENTER mark through registration and subsequent assignment of the mark registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,715,064 registered May 13, 2003). Complainant’s online operation is directed through <onlinevacationcenter.com>, which it has used since its registration on September 28, 2000. The Panel finds that Complainant has rights in the ONLINE VACATION CENTER mark pursuant to Policy ¶ 4(a)(i) in light of the USPTO registration and assignment. See Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues the <online-vacation-center.com>, <onlinevacationcenter.net>, <online-vacation-center.net>, <onlinevacationcenter.org>, and <online-vacation-center.org> domain names are confusingly similar to the ONLINE VACATION CENTER mark. The Panel notes that the disputed domain names are comprised of the ONLINE VACATION CENTER mark, absent the spacing, and with the addition of various generic top-level domains (“gTLD”). The Panel also notes that three of the names insert hyphens in place of the spaces separating the three-word mark. Prior panels have concluded that such alterations fail to negate confusing similarity where the domain name wholly incorporates the mark at issue. As the panel in Aria Vatankhah v. Identity Protection Services / Identity Protect Limited / Koosha Hashemi / Ava ltd, FA 1432522 (Nat. Arb. Forum April 30, 2012) wrote, “By using Complainant’s mark, adding the generic top-level domain “.com” and a hyphen, and removing the space between the terms of the mark, Respondent’s disputed domain names [<ariavatankhah.com> and <aria-vatankhah.com>] are identical to the Complainant’s ARIA VATANKHAH mark under Policy ¶ 4(a)(i).” The Panel determines that the additions of hyphens and gTLDs, as well as the elimination of spacing, are inconsequential to the Policy ¶ 4(a)(i) analysis, and therefore finds the <online-vacation-center.com>, <onlinevacationcenter.net>, <online-vacation-center.net>, <onlinevacationcenter.org>, and <online-vacation-center.org> domain names are confusingly similar to the ONLINE VACATION CENTER mark.
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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.”).
In pursuit of its prima facie case, Complainant argues that Respondent is not commonly known by the disputed domain names. Complainant asserts that it has no affiliation with Respondent, and points to the WHOIS record to show no self-selective association. The Panel notes that the WHOIS information identifies “Andre Little / Andre Little, P.A.” as the registrant of record for the disputed domain names. As will be discussed in more detail below, the Panel also notes that Respondent claims to do business as “Online Vacation Center,” and that this name appears on the landing pages association with the domain names in dispute. Of note here, the panel in Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) held, “[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.” The Panel agrees that the use of a mark or name on the resolving pages does not itself demonstrate that a respondent is commonly known by the name. In light of the available evidence, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
With respect to Respondent’s use of the disputed domain names, Complainant claims Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Specifically, Complainant argues Respondent uses the disputed domain names in connection with pages advertising travel services that are identical to those offered by Complainant. Complainant urges that this is an attempt to divert Internet uses from Complainant’s website to Respondent’s apparently comparable offerings. The Panel sees that all but the <onlinevacationcenter.org> domain name resolve to advertise travel related services. The Panel finds that Respondent’s use of a confusingly similar domain name to offer travel agency services in competition with Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant also notes the domain name <onlinevacationcenter.org> is inactive and therefore similarly falls outside the protections of the Policy. Prior panels have used inactivity as evidence that a respondent lacks rights or a legitimate interest in the domain name. See, e.g., Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel here finds that Respondent has no rights in the <onlinevacationcenter.org> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iii) by resolving the disputed domain names to promote competing travel agency services. Complainant claims such use disrupts its own travel agency. The Panel notes that four of the five domain names resolve to websites featuring travel packages and travel-related advertisements. In Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005), the panel wrote, “The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).” Accordingly, the Panel agrees that the requisite level of competition is present here, and that Respondent’s competing efforts under the disputed domain names amounts to bad faith commercial disruption pursuant to Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent is attempting to mislead Internet users into associating Respondent’s offerings with Complainant’s established goodwill in an effort to commercially benefit. Prior panels have found evidence of bad faith in similar circumstances where the respondent is conducting a competing use. For example, in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found 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 offered by the complainant under its mark. In light of Respondent’s commercial use of the disputed domain names to compete with Complainant as a travel agency, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith use and registration.
In addition, Complainant argues the <onlinevacationcenter.org> domain name is not used in connection with an active website, which viewed under the totality of the circumstances, is further evidence of bad faith. In Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), the panel agreed, saying, “[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Further, in Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Here, the Panel finds that Respondent’s inactive holding of the <onlinevacationcenter.org> domain name evinces bad faith pursuant to Policy ¶ 4(a)(iii) considering the totality of circumstances.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <online-vacation-center.com>, <onlinevacationcenter.net>, <online-vacation-center.net>, <onlinevacationcenter.org>, and <online-vacation-center.org> domain names be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panel Chair
Sandra J. Franklin, Panelist
Paul M. DeCicco, Panelist
Dated: October 15, 2014
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