Priceline.com, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1607001684157
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pricelikne.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2016; the Forum received payment on July 18, 2016.
On July 20, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <pricelikne.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 July 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2016 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@pricelikne.com. Also on July 21, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <pricelikne.com> domain name is confusingly similar to Complainant’s PRICELINE mark.
2. Respondent does not have any rights or legitimate interests in the <pricelikne.com> domain name.
3. Respondent registered and uses the <pricelikne.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the PRICELINE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,272,659, registered Aug. 24, 1999). The mark is used in connection with the promotion and provision of travel agency services.
Respondent registered the <pricelikne.com> domain name on October 16, 2009, and uses it to resolve to Complainant’s website in violation of the affiliate agreement Respondent entered into with Complainant.
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(f), 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 (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 Panel finds that Complainant’s registration of the PRICELINE mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i).”).
Respondent’s <pricelikne.com> domain name contains the entire PRICELINE mark and simply adds the letter “k” and the gTLD “.com.” As a general rule, panels disregard the “.com” portion of the disputed domain name, as it has been found time and time again to be of no distinguishing relief for respondents. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Prior panels have found confusing similarity where the only other difference between the domain name and trademark was an added letter. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Therefore, the Panel finds that Respondent’s <pricelikne.com> domain name is confusingly similar to Complainant’s PRICELINE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes 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 (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 (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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name, and is not licensed to use the PRICELINE mark in domain names. The Panel notes that “Ryan G Foo” is listed as the registrant of record for the disputed domain name, and the record is devoid of any evidence to indicate that Respondent is commonly known as the disputed domain name. The Panel therefore finds that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that the disputed domain name resolves to Complainant’s own website, and that such use violates the affiliate agreement Respondent entered into with Complainant. Prior panels have found that similar use is not a demonstration of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel therefore finds that Respondent has no rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering the disputed domain name for sale. The Panel notes evidence of the offer in the record and finds bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations. Complainant provides a listing of a number of adverse UDRP decisions against Respondent. This has been found to constitute bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(ii).
Respondent has also displayed bad faith under Policy ¶ 4(a)(iii) by using the <pricelikne.com> domain name to redirect Internet users to Complainant’s own website, in violation of the affiliate agreement Respondent entered into with Complainant. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum Oct. 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant. Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”).
Complainant claims that the “k” in <pricelikne.com> was added with the specific purpose of taking advantage of Internet users who mistakenly added the letter when searching for Complainant’s website. In such circumstances, prior panels have found bad faith typosquatting. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Thus, the Panel finds that Respondent has engaged in typosquatting, additional evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that, in light of the fame and notoriety of its PRICELINE trademark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees, particularly given Respondent’s use of the disputed domain name, and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has 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 <pricelikne.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 18, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page