The Coryn Group, Inc. v. Kentech, Inc.
Claim
Number: FA0507000520523
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 Kentech, Inc. (“Respondent”), 1st Floor Muya House Kenyatta, P.O.
Box 4276-30100, Eldoret, Rift Valley, 30100 KE.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <myapplevacations.com>, registered with Domain
Contender, Llc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 22, 2005.
On
July 20, 2005, Domain Contender, Llc confirmed by e-mail to the National
Arbitration Forum that the <myapplevacations.com> domain name is
registered with Domain Contender, Llc and that Respondent is the current
registrant of the name. Domain Contender, Llc has verified that Respondent is
bound by the Domain Contender, Llc 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
August 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 22, 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@myapplevacations.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 29, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <myapplevacations.com>
domain name is confusingly similar to Complainant’s APPLE VACATIONS mark.
2. Respondent does not have any rights or
legitimate interests in the <myapplevacations.com> domain name.
3. Respondent registered and used the <myapplevacations.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, which offers vacation
packages to domestic and foreign destinations.
Complainant offers air transportation, ground transfers and hotel
accommodations under the APPLE VACATIONS mark.
Complainant has
used the APPLE VACATIONS mark in commerce since 1979. Complainant has also sold hundreds of millions of dollars worth
of travel packages under the APPLE VACATIONS mark and has expended considerable
resources advertising and promoting travel services under its mark.
Complainant has
registered the APPLE VACATIONS mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,462,268 issued October 20, 1987).
Respondent
registered the <myapplevacations.com> domain name on July 14,
2005. Respondents domain name resolves
to a website that features links to third-party commercial websites that
directly compete with Complainant’s business.
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. 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.”).
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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”);
see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the
NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Additionally, Respondent’s <myapplevacations.com> domain
name is confusingly similar to Complainant’s mark, as the domain name fully
incorporates Complainant’s APPLE
VACATIONS mark in its entirety and merely adds the term “my.” Such an addition is not enough to overcome a
finding of confusing similarity pursuant to Policy 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15,
2003) (finding that the addition of the term “assurance,” to the complainant’s
AIG mark failed to sufficiently differentiate the name from the mark under
Policy ¶ 4(a)(i) because the appended term related directly to the
complainant’s business); see also Am. Online, Inc. v. Anytime Online Traffic
Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the
respondent’s domain names, which incorporated
the complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <myapplevacations.com> domain
name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp.
v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent does
not have rights or legitimate interests in the <myapplevacations.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts
to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a response, the respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Respondent has
offered no evidence, and there is no proof in the record indicating that
Respondent is commonly known by the <myapplevacations.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent
has no rights or legitimate interests in domain names because it is not
commonly known by the complainant’s marks and the respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent was not commonly known by the disputed domain name nor was the
respondent using the domain name in connection with a legitimate or fair use).
Additionally,
the confusingly similar <myapplevacations.com> domain name is used
to redirect Internet users to third-party websites advertising travel and
vacation services and products. The
Panel finds that Respondent’s diversionary use of the domain name to divert
Internet users to Respondent’s website for which Respondent presumably receives
click-through fees is not 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
commercial website. Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv), as Respondent is using the <myapplevacations.com>
domain name to intentionally
attract, for commercial gain, Internet users to its website, by creating a
likelihood of confusion with Complainant as to the source, sponsorship,
affiliation or endorsement of its website.
See H-D Michigan, Inc. v.
Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through the respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
Furthermore,
Respondent has used the <myapplevacations.com>
domain name, which contains Complainant’s APPLE VACATIONS mark, to redirect
Internet users to third-party websites featuring travel and vacation services
and products that compete with Complainant’s business. This suggests that Respondent had actual
knowledge of Complainant’s rights in the mark when it registered the domain
name and chose the disputed domain name based on the goodwill Complainant has
acquired in its APPLE VACATIONS mark.
Furthermore, Complainant’s registration of the APPLE VACATIONS mark with
the USPTO bestows upon Respondent constructive notice of Complainant’s rights
in the mark. Respondent’s registration
of a domain name containing Complainant’s mark in spite of Respondent’s actual
or constructive knowledge of Complainant’s rights in the mark 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 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 the Complainant’s mark when it registered the subject
domain name”); 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.”).
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 <myapplevacations.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 8, 2005
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