The Coryn
Group, Inc. v. Henry Tsung
Claim
Number: FA0504000467832
Complainant is The Coryn Group,
Inc. (“Complainant”), represented by Thomas
P. Arden, of Holland & Knight LLP, 131 South Dearborn Street, 30th
Floor, Chicago, IL 60603. Respondent is
Henry Tsung (“Respondent”), No. 2,
Alley 4, Lane 177, Swei Rd., Taipei 356021, Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <applevacaton.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum electronically on April 26, 2005; the National Arbitration
Forum received a hard copy of the Complaint on April 28, 2005.
On April 29, 2005, Iholdings.com, Inc. d/b/a
Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the
domain name <applevacaton.com> is registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 May 2, 2005, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of May 23, 2005 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@applevacaton.com by e-mail.
Having received no Response from Respondent, using
the same contact details and methods as were used for the Commencement
Notification, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On May 26, 2005, pursuant to Complainant's request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed James A. Crary 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." 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 makes the following assertions:
1.
Respondent’s <applevacaton.com> domain name is confusingly
similar to Complainant’s APPLE VACATIONS mark.
2.
Respondent does not have any rights or legitimate interests in the <applevacaton.com>
domain name.
3.
Respondent registered and used the <applevacaton.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, The Coryn Group, Inc., is a leading travel and tour
provider that offers vacations packages to foreign and domestic
destinations. Complainant has
registered its APPLE VACATIONS mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,462,268 issued October 10, 1987).
Respondent registered the <applevacaton.com> domain name on
December 17, 2003. Respondent’s domain
name resolves to a website that features links to competing travel-related
websites.
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."
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.
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 has established rights in the APPLE VACATIONS mark through
registration with the USPTO. See
KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20,
2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of
the Policy whether the complainant’s mark is registered in a country other than
that of the respondent’s place of business); see also Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Respondent’s <applevacaton.com>
domain name is confusingly similar to Complainant’s APPLE VACATIONS mark, as
the domain name is identical to Complainant’s mark but for the deletion of the
letters “i” and “s” from the term “vacations.”
Additionally, Respondent’s domain name adds the generic top-level domain
“.com” and omits the space between the terms of Complainant’s mark. Such minor alterations are insignificant,
and are not enough to negate a finding of confusing similarity pursuant to
Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259
(WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or
changes, such as the addition of a fourth “w” or the omission of periods or
other such generic typos do not change respondent’s infringement on a core
trademark held by the complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, the
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); 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.”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all
reasonable allegations and assertions set forth by Complainant as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence); 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 has asserted that Respondent has no rights or legitimate
interests in the disputed domain name, and Respondent, in not submitting a
response, has failed to rebut this assertion.
Thus, the Panel may construe Respondent’s failure to respond as evidence
that Respondent lacks rights and legitimate interests in the <applevacaton.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is using the <applevacaton.com> domain name,
which is confusingly similar to Complainant’s APPLE VACATIONS mark, to operate
a website that features various links to competing travel-related
websites. The Panel infers that
Respondent receives click-through fees for diverting Internet users to these
websites. Such competing use is not a
use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
the respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with the complainant, was not a
bona fide offering of goods or services); see also Winmark Corp. v. In The
Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that the respondent
had no rights or legitimate interests in a domain name that used the
complainant’s mark to redirect Internet users to a competitor’s website).
Furthermore, nothing in the record indicates that Respondent is either
commonly known by the disputed domain name or authorized to register domain
names featuring Complainant’s APPLE VACATIONS mark. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the <applevacaton.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in the respondent’s WHOIS information implies that the respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests 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),
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the confusingly similar <applevacaton.com>
domain name to operate a website that features links to competing travel-related
services. Such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent diverted business from the complainant to
a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
The Panel infers that Respondent receives click-through fees for
diverting Internet traffic to competing commercial websites. Because Respondent’s <applevacaton.com>
domain name is confusingly similar to Complainant’s APPLE VACATIONS mark,
consumers accessing Respondent’s domain name may become confused as to
Complainant’s affiliation to the resulting website. Thus, Respondent’s commercial use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the Complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the
misleading domain name is evidence of bad faith pursuant to Policy ¶
4(b)(iv).”).
Furthermore, Respondent registered the
disputed domain name with actual or constructive knowledge of Complainant’s
rights in the APPLE VACATIONS mark due to the Complainant’s registration of the
mark with the USPTO. Moreover, the
Panel infers that Respondent registered the domain name with actual knowledge
of Complainant’s mark due to the obvious connection between the content
advertised on Respondent’s website and Complainant’s business. Thus, registration of a domain name that is
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation thereof.”);
see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding
that because the link between the complainant’s mark and the content advertised
on the respondent’s website was obvious, the respondent “must have known about
Complainant’s mark when it registered the subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <applevacaton.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A.
Crary, Panelist
Dated: June 9, 2005
to return to
the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum