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Generic Top Level Domain Name (gTLD) Decisions |
Travelocity.com LP v. John Smith
Claim Number: FA0306000161279
PARTIES
Complainant
is Travelocity.com LP, Fort Worth,
TX, USA ("Complainant") represented by Demetrius T. Lockett of Alston
& Bird, LLP. Respondent is John
Smith, South Africa ("Respondent")
represented by Phillipa Heyman.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwtravelocity.com>
registered with Domain People Inc.
PANEL
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.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 2, 2003; the Forum
received a hard copy of the Complaint
on June 2, 2003.
On
June 4, 2003, Domain People Inc. confirmed by e-mail to the Forum that the
domain name <wwwtravelocity.com>
is registered with Domain People Inc. and that the Respondent is the current
registrant of the name. Domain People Inc. has verified
that Respondent is
bound by the Domain People Inc. 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
June 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 25, 2003 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@wwwtravelocity.com by e-mail.
A
timely Response was received and determined to be complete on June 25, 2003.
On
June 30, 2003, an Additional Submission was received from Complainant though
the fee was late, being received only on July 7, 2003.
On
July 3, 2003, a timely Additional Submission was received from Respondent.
On July 7, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Rodney C. Kyle as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Basically,
in the Complaint, Complainant makes four main contentions.
First,
Complainant basically contends by way of four points that (i) the domain name
at issue is registered to Respondent; (ii) Complainant
"is a wholly owned
subsidiary of Sabre Holdings Corporation" and has "rights in the
world-famous marks TRAVELOCITY
and TRAVELOCITY.COM (hereinafter 'the
TRAVELOCITY Marks')" which marks Complainant has "continuously
used" since "at
least as early as 1996 … to identify its online
travel and accommodations services", which is "well prior to the date
on
which Respondent registered and began using the [domain name at
issue]"; (iii) "[t]hose rights are reflected in 45 registrations
in
18 countries, including United States Registration Nos. 2,254,700 and
2,466,132" respectively; and (iv) the domain name at
issue
"incorporates [Complainant's] famous TRAVELOCITY mark in full" and is
confusingly similar to said marks.
Second,
Complainant basically contends by way of three points that Respondent has no
"rights or legitimate interests" in
respect of the domain name at
issue in that (i) besides itself, Complainant "is not aware of" any
"individual or entity
anywhere in the world with the legal right to use
the mark TRAVELOCITY in connection with any goods or services" and instead
"Respondent has no connection or affiliation with [Complainant], nor has
[Respondent] at any time received from [Complainant]
license or consent,
express or implied, to use the TRAVELOCITY Marks in a domain name or in any
other manner"; (ii) Complainant
believes "Respondent belongs to
affiliate programs for the various travel related Web sites to which
[Respondent's] site links"
and, as such, "Respondent is paid by the
operators of the linked sites for each Internet user Respondent directs to the
sites",
such that "Respondent's transparent motivation for
registering and using the [domain name at issue] is to profit by diverting
Internet users[,] who mistakenly fail to type a period between "www" and
TRAVELOCITY.COM in their browser address bars[,]
to Respondent’s Web site and
then to the various Web sites linked to Respondent’s site"; and (iii)
Respondent registered the
domain name at issue on August 11, 2000, which is
"more than four years … after [Complainant] began using its mark
worldwide"
and "Respondent was on notice of [Complainant’s] exclusive
rights in the TRAVELOCITY Marks as a result of [Complainant's] numerous
federal
and international registrations of the marks and the
international fame of the marks based on [Complainant's] longstanding
international use and promotion thereof."
Third, Complainant basically
contends by way of two points that Respondent's
registration and use of the domain
name at issue are in bad faith, respectively as defined
by Policy paragraph 4(b)(iv) and the
preamble of Policy paragraph 4(b), in that (i) "to
capitalize upon the goodwill and
fame associated with the TRAVELOCITY Mark"
Respondent has used the domain name
at issue "to host a Web site that offered access to
online travel retailers …, including
a link to Expedia.com, a direct competitor of"
Complainant; and (ii) as separate
bases under the Policy paragraph 4(b) preamble, (a)
although Complainant's counsel sent
cease and desist letters by either or both of hard-
copy and e-mail to Respondent dated
January 8, 2002 and April 16, 2003, "[t]o date,
neither [Complainant] nor its
counsel has received a response from Respondent to either
of these letters" except that
the January 8, 2002 "letter was returned by UPS as
'undeliverable'" and "[a]t
some point after [Complainant's] counsel sent its April 16 letter
… Respondent stopped using
the[domain name at issue] to host" Respondent's web site
and (b) Respondent "provided false contact information for
himself in his registration of
the" domain name at issue, in
that said contact information "apparently includes a non-
existent city/township" and that "the January 8th UPS leader was
returned
'undeliverable.'"
Fourth, Complainant basically
contends that (i) the domain name at issue is registered to
Respondent is evidenced by a "copy of DomainPeople’s WHOIS record for the domain
Name WWWTRAVELOCITY.COM" that
is "Exhibit 1 to the Declaration of Demetrius
T. Lockett (hereinafter the 'Lockett
Decl.')," that is Complaint Exhibit A, and by "[a]
copy of the relevant listing from
Verisign’s database is attached as Exhibit 2 to the
Lockett
Decl."; (ii) "[t]rue and correct
copies of the Certificates of Registration for [Complainant's] U.S. trademark
registrations are attached as Exhibit 1 to the Declaration of Keenan
Conder (hereinafter 'Conder Decl.'), attached to [the] Complaint as Exhibit
B";
(iii) Complaint Exhibits A and B evidence Complainant's rights in, and
the fame of, the TRAVELOCITY Marks; (iv) Complaint Exhibit
A includes as its
Exhibit 3 "[a] true and correct printout of the
home page of Respondent’s Web site" as it existed before
Complainant's counsel sent the April 16, 2003 letter; and (v) Complaint Exhibit
A includes, respectively
as its Exhibits 4 and 5, copies of said letters from
Complainant's counsel dated January 8, 2002 and April 16, 2003.
B.
Respondent
Basically,
in the Response, Respondent makes three main contentions.
First,
basically in response to Complainant's first main set of contentions,
Respondent expressly pleads that the domain name at issue
"is similar
to" TRAVELOCITY.COM and that
"[w]hen [Complainant] first discovered the domain name [at issue], the
Respondent was using the [domain name at issue]
to host a Web site that offered
access to online travel retailers". However, Respondent then basically
contends by way of two
points that the domain name at issue is not confusingly
similar in that (i) "when the Respondent received notification from
[Complainant]
on April 16, 2003 stating [Complainant’s] demands, the Respondent immediately
ceased to use the domain publicly"
and "continued (and still
continues) to use the domain as a place to store information and web design
images, and the domain
is not for public use in any way" and that
"the site is being used for personal storage of information only";
and
(ii) Respondent's web site "states that the [domain name at issue] has
been registered and is Under Construction," such
that "[i]t is
therefore apparent to someone who types in [the corresponding] url in error
that they indeed have made a mistake
and that this is NOT [Complainant's]
website."
Second,
basically in response to Complainant's second main set of contentions,
Respondent basically contends by way of two points
that (i) the domain name at
issue "is the personal property of" Respondent; and (ii) "[o]nce
the Respondent was notified
by [Complainant] [Respondent] immediately took the
site down" and Respondent is using the domain name at issue "as a
place
to store information and web design images for personal use" and
that thereby "Respondent is making a legitimate noncommercial
use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service
mark at issue."
Third,
basically in response to Complainant's third main set of contentions,
Respondent basically contends by way of two points that
(i) rather than being
contrary to Policy paragraph 4(b)(iv), "[t]he domain name [at issue] is
the personal property of the respondent,
is being used for personal purposes
with no intent for commercial gain and is therefore not being used in bad
faith" and indeed
that "Complainant recognizes there is no bad faith
because [Complainant] states that the website was taken down in April"
so
"the issues of confusion and similarity no longer apply" and
"Respondent has no plan to use the website in any
manner that is remotely
confusing and is therefore acting in good faith"; and (ii) rather than
having provided false contact
information in registering the domain name at
issue contrary to the preamble of Policy paragraph 4(b), "when registering
a domain
name, the format provided to submit the Registrant’s address is in a
format suitable for an American address only" such that
"[i]t is not
in a suitable format for a South African address as there are no 'States' in
South Africa as there are in the USA"
so "Respondent had to enter
'South Africa' as the state" and, in any event, "Respondent had subsequently
moved from
the address that was listed as [Respondent's] contact address when
the Complainant attempted to send [Respondent] a letter and it
was returned
'undeliverable'."
C.
Additional Submissions
Each
Party delivered an Additional Submission, largely repetitive of that Party's
respective Complaint or Response. Even to the extent
of not repeating
themselves, and even if each is considered timely, neither Party’s Additional
Submission permissibly provides anything
pertinent that, in view of the
Complaint and the Response, was not already apparent to the Panel as being at
issue in this proceeding
or as being the responsibility of the Panel.
FINDINGS
The
Panel finds
(i)
the domain
name at issue is registered to Respondent, there is at least the trademark
TRAVELOCITY.COM in which Complainant has rights,
and the domain name at issue
is confusingly similar thereto;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name at issue;
and
(iii)
the domain
name at issue has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") instructs this Panel to
"decide
a complaint on the basis of the statements and documents submitted
and 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 the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(i)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(ii)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii)
the domain
name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements has been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already
ascertained by one or more of the four methods here
outlined).[1]
Second,
especially as to mode "3", that Rule 10(d) provides that "The
Panel shall determine the admissibility, relevance,
materiality and weight of
the evidence." Third, as to construing and applying Rule 10(d), especially
as to whether mode "1"
rather than mode "3" applies: a
complainant’s pleading of fact that is not disputed (or, phrased differently,
not "put
in issue") by a respondent against whom it is contended, is
an admission by that respondent,[2]
so evidence tendered as being rationally probative of (i.e. as being
"relevant to") establishing that fact becomes immaterial,
and hence
inadmissible, as to establishing that fact.[3]
Fourth, as to whether mode "2" rather than either of mode
"1" or mode"3" applies, a canvassing of law
and commentary
shows that
It
was not desirable, nor indeed possible, to foreclose the trier's use of
background information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[4]
and that
"The party who has the burden of proof on the issue may have to call on
the trier to judicially notice the fact when
it comes time to analyze the
question."[5]
Respondent's first main set of
contentions do not put in issue the basic facts contended for by Complainant's
first main set of contentions,
even as to whether there is similarity. Respondent's first main set of contentions
do, however, put in issue whether the domain name is confusingly similar in that Respondent is not now using (as
contrasted with was using) the domain name in commerce.
For Policy paragraph 4(a)(i) to be met
requires a domain name to be identical or confusingly similar to a trademark or
service mark
in which a complainant has rights, whether or not (aside from
obtaining the domain name registration) the domain name registrant
is using
that mark or one confusingly similar to it. See e.g. Porto Chico Stores, Inc. v.
Otavio Zambon , D2000-1270 (WIPO, November 15, 2000) which includes that
"The panel considers this issue is to be resolved by comparing the
trademark and the disputed domain name, without
regard to the circumstances under which either may be used."
(Underlining added.) Similarly, see e.g. The
Vanguard Group v. Lorna Kang, D2002-1064 (WIPO January 20, 2003) and The Toronto-Dominion Bank v. Lorna Kang,
FA 150816 (Nat. Arb. Forum April 28, 2003).
The Panel finds that Respondent's
prefacing Complainant’s TRAVELOCITY.COM mark with "www" does not
under Policy paragraph
4(a)(i) sufficiently distinguish the domain name at
issue because Complainant’s mark remains the principal element of the domain
name at issue. See e.g. Marie Claire
Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) which includes
that the letters "www" are not distinct in the "Internet
world"
and thus that respondent 's <wwwmarieclaire.com> domain name
is confusingly similar to that complainant's MARIE CLAIRE trademark;
see also Neiman Marcus Group, Inc. v. S1A, FA
128683 (Nat. Arb. Forum Dec. 6, 2002) including that confusing similarity has
been established because the prefix "www"
does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from that
complainant's NEIMAN-MARCUS mark.
In view especially of the three
immediately preceding paragraphs, the Panel finds that Policy paragraph 4(a)(i)
is proven.
The context in which this part of this
discussion occurs includes (i) Policy paragraph 4(c); and (ii) administrative
panel decisions
as to burden of production.
Policy
Paragraph 4(c)
Policy paragraph 4(c) is basically
directed from a domain name registrar to a domain name registrant and
prospective mandatory administrative
proceeding respondent, and includes that
When you receive a complaint, you should
refer to [Rule 5] in determining how your response should be prepared. Any of
the following
circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented,
shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy paragraph] 4(a)(ii):
(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired
no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly
divert consumers or to tarnish the trademark or service
mark at issue.
(See endnote 2 hereof for some provisions
of Rule 5.)
As for Policy paragraph 4(c)(ii), it does
not appear to be contended for by Respondent in this proceeding, whether by
evidence or
otherwise.
As for Policy paragraphs 4(c)(i) and
4(c)(iii), and the preamble of paragraph 4(c), they appear to be contended for
by either or both
of Respondent's pleadings and argument (but not by evidence)
in this proceeding.
Even if Respondent could be said to have
adopted one or more aspects of Complainant's evidence and contended them to be
in support
of Policy paragraph 4(c)(i), in the circumstances of this case the
"offering" could not have been "bona fide".
See e.g. Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) which includes that "[t]yposquatting as a means of redirecting
consumers against their will
to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site."
Even if Respondent could be said to have
adopted one or more aspects of Complainant's evidence and contended them to be
in support
of Policy paragraph 4(c)(iii) (rather than Respondent's merely
providing the Panel with a hypertext link to Respondent's web site
apparently
resolving through the domain name at issue), in the circumstances of this case
the "use" cannot be "legitimate".
See e.g. Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, supra, and Encyclopaedia
Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) which
includes that fair use does not apply where the domain names are misspellings
of complainant's
mark.
Even if Respondent could be said to have
adopted one or more aspects of Complainant's evidence and contended them to be
in support
of the preamble of Policy paragraph 4(c) (as to the domain name at
issue being Respondent's personal property), Respondent's contention
would be
wrong. If a respondent's domain name registration that is the very
subject-matter of a mandatory administrative proceeding
under the Policy could,
per se, confer or evidence
"rights or legitimate interests" within the meaning of that
expression as it appears in Policy paragraph
4(a)(ii) then the Policy would
basically be rendered a nullity. As a result, it has long been well and clearly
established by mandatory
administrative proceeding decisions under the Policy
that such registrations do not do so. See e.g. the following decisions, and
decisions in which they are cited: N.C.P.
Marketing Group, Inc. v. Entredomains,
D2000-0387 (WIPO July 5, 2000) and Vestel
Elektronik Sanayi ve Ticaret AS v. Mehmet
Kahveci, D2000-1244 (WIPO Nov. 11, 2000).
Administrative
Panel Decisions As To Burden Of Production
Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) includes that when, as in this case, "the complainant has made a prima facie showing, the burden of
production shifts to the respondent to show by providing concrete evidence that
it has rights to or legitimate
interests in the domain name at issue"
(emphasis in original). To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
and Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).
Summary
In view especially of the eight
immediately preceding paragraphs, the Panel finds that Policy paragraph
4(a)(ii) is proven.
The context in which this part of this
discussion occurs includes Policy paragraph 4(b).
Policy paragraph 4(b) is basically
directed from a domain name registrar to a domain name registrant and
prospective mandatory administrative
proceeding respondent, and includes that
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose
of selling, renting,
or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to
a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in
a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation,
or endorsement of your web site or location
or of a product or service on your web site or location.
As for each of Policy paragraphs 4(b)(i),
4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith
registration
and provide that if any one of such types of registration has been
ascertained by a panel then bad-faith use is in turn evidenced
via application
of the respective one of those three provisions. In this proceeding, none of
Policy paragraphs 4(b)(i), 4(b)(ii),
or 4(b)(iii) appears to be contended for.
As
for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and
provides that if such type of use is ascertained
by a panel then bad-faith
registration is in turn evidenced via application of that provision. In this
proceeding, Policy paragraph
4(b)(iv) and the preamble of Policy paragraph 4(b)
appear to be contended for by Complainant by way of pleading, evidence, and
argument
and, in response, Respondent puts in issue whether Policy paragraph 4(b)(iv) and the
preamble of Policy paragraph 4(b) are proven. As a result, the Panel notes two
points. First, Respondent
basically urges the Panel to misconstrue Policy
paragraph 4(b)(iv) as being limited to the present tense; it is not limited to
the
present tense. Second, Exhibit 3 to Complaint Exhibit A (i.e. "[a] true and correct printout of the home page of Respondent’s Web
site" as it existed before Complainant's counsel sent the April 16,
2003 letter) is especially material evidence; moreover, it is
relevant,
admissible, is to be accorded substantial weight, and indeed proves the facts
that meet Policy paragraph 4(b)(iv). (Similarly
see e.g. TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) finding bad faith where respondent used the domain name, for commercial
gain, to intentionally
attract users to a direct competitor of complainant; Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) finding bad faith where respondent attempted to
attract customers to its website, <efitnesswholesale.com>,
and created
confusion by offering similar products for sale as complainant; Black & Decker Corp. v. Azra Khan, FA
137223 (Nat. Arb. Forum Feb. 3, 2003) finding the <wwwdewalt.com> domain
name was registered to "ensnare those individuals
who forget to type the
period after the 'www' portion of [a] web-address," evidence that the
domain name was registered and
used in bad faith; and Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb.
Forum Feb. 6, 2003) stating that "in typosquatting cases, such as this
one, it would be difficult for
Respondent to prove to the Panel that it did not
have actual knowledge of Complainant’s distinctive MEDLINE mark when it
registered
the infringing <wwwmedline.com> domain name".)
In view of the immediately preceding
paragraph hereof, the Panel need not address the Parties' contentions regarding
the preamble
of Policy paragraph 4(b).
In view especially of the five
immediately preceding paragraphs, the Panel finds that Policy paragraph
4(a)(iii) is proven .
DECISION
All
three elements required under the Policy having been established, the Panel
concludes that the relief requested by Complainant
shall be GRANTED.
Accordingly, it is Ordered that the <wwwtravelocity.com> domain name
be TRANSFERRED from Respondent to
Complainant.
Rodney C. Kyle, Panelist
Dated: July 21, 2003
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