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Generic Top Level Domain Name (gTLD) Decisions |
Red Star International LLC d/b/a Red Star
Travel v. GTR Travel
Claim
Number: FA0307000167921
Complainant is Red Star International LLC d/b/a Red Star Travel, Seattle, WA (“Complainant”) represented by Roman Loukiantchikov. Respondent is GTR Travel, Atlanta, GA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <redstartravel.com>, registered with Dotster.
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
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 3, 2003; the Forum
received a hard copy of the Complaint
on July 7, 2003.
On
July 9, 2003, Dotster confirmed by e-mail to the Forum that the domain name <redstartravel.com>
is registered with Dotster and that Respondent is the current registrant of the
name. Dotster has verified that Respondent is bound
by the Dotster 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
July 14, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 4, 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@redstartravel.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
August 13, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra
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."
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 makes the following assertions:
1. Respondent’s <redstartravel.com>
domain name is identical to Complainant’s RED STAR TRAVEL mark.
2. Respondent does not have any rights or
legitimate interests in the <redstartravel.com> domain name.
3. Respondent registered and used the <redstartravel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Red
Star International LLC d/b/a Red Star Travel, has used the RED STAR TRAVEL mark
since April of 1998 in connection
with the arrangement of travel tours and
related travel agency services, specializing in travel to the Russian
Federation and the
former Soviet Republics. Complainant is a major seller of
tickets for Aeroflot Russian Airlines and is the preferred travel agency
of the
Russian Consulate General in Seattle, Washington. Complainant processes
hundreds of visas for its travelers each month, and
assists hundreds more with
other travel related services. Along with in-person and telephone business,
Complainant provides its services
to consumers through the
<travel2russia.com> domain name.
Respondent, GTR
Travel, registered the <redstartravel.com> domain name on August
2, 2000, and is not licensed or authorized to use Complainant’s RED STAR TRAVEL
mark for any purpose. Respondent
initially used the disputed domain name to
redirect Internet users to its own website at the <gotorussia.com> domain
name,
which provides travel related services in competition with Complainant.
After receiving a cease and desist letter from Complainant,
Respondent removed
the automatic redirection and instead posted its own logo at the disputed
domain name, along with a hyperlink
to its <gotorussia.com> domain name.
It was at this time that Respondent also posted a message stating that the
disputed domain
name was for sale.
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 RED STAR TRAVEL mark through proof of secondary
meaning associated with that mark, in connection
with its widespread and
continuous use of the mark in commerce. See British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and
service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service
marks”); see also S.A. Bendheim Co.,
Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003)
(holding that Complainant established rights in the descriptive RESTORATION
GLASS mark
through proof of secondary meaning associated with the mark).
Respondent’s <redstartravel.com>
domain name is identical to Complainant’s RED STAR TRAVEL mark.
Respondent’s addition of the top level domain “.com” does not distinguish
the
domain name from Complainant’s mark, just as the elimination of the spaces in
Complainant’s mark fails to create a domain name
that is distinct from
Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2002) (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”).
Accordingly, the
Panel finds that the <redstartravel.com> domain name is identical to Complainant’s RED STAR TRAVEL mark under
Policy ¶ 4(a)(i).
Respondent
initially used the <redstartravel.com> domain name to redirect
Internet users to its own commercial domain name, which competed directly with
the services provided by Complainant.
Respondent’s subsequent removal of this
redirection and posting of a hyperlink to its domain name operates in
practically the same
manner. This use of Complainant’s mark in a domain name,
with the intention of attracting Internet consumers away from Complainant
to
Respondent, is not a bona fide offering of goods or services as contemplated by
Policy ¶ 4(c)(i), and is not a legitimate noncommercial
or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that
compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests
in a domain
name that utilized Complainant’s mark for its competing website).
After being
contacted by Complainant and being put on notice that Complainant was aware of
Respondent’s infringing behavior, Respondent
began advertising that its domain
name registration was for sale. As Respondent has made no constructive use of
the disputed domain
name other than to use it to siphon Internet users to its
website, the Panel finds that Respondent’s conduct purporting to sell its
domain name registration is evidence that Respondent lacks rights or legitimate
interests in the disputed domain name. See Mothers Against Drunk Driving v.
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the
circumstances, Respondent’s apparent willingness to dispose of
its rights in
the disputed domain name suggested that it lacked rights or legitimate
interests in the domain name); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000)
(finding no rights in a domain name where Respondent offered the infringing
domain name for sale and
the evidence suggests that anyone approaching this
domain name through the worldwide web would be "misleadingly"
diverted
to other sites).
Respondent, a competitor of Complainant, is not licensed or authorized
to use Complainant’s RED STAR TRAVEL mark for any purpose.
As Respondent apparently
does business as GTR Travel, or as <gotorussia.com>, the Panel is
unwilling to find that Respondent
was “commonly known by” the disputed domain
name, and holds that Policy ¶ 4(c)(ii) does not apply to Respondent. See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<redstartravel.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered and used the <redstartravel.com> domain name in bad faith. Respondent
registered a domain name that was identical to the mark of its competitor,
evidence that Respondent
had actual knowledge of Complainant’s rights in the
RED STAR TRAVEL mark and an intention to capitalize on the goodwill Complainant
had built up around that mark. In fostering a likelihood of confusion with
Complainant’s mark for its own commercial gain, Respondent
runs afoul of the
provisions of Policy ¶ 4(b)(iv), one example of registration and use of a
domain name in bad faith. See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing
with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration
and use pursuant to Policy 4(b)(iv)); see
also 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).
Furthermore, as both Complainant and Respondent operate in the
relatively specialized field of servicing consumers seeking to travel
to the
Russian Federation, Respondent’s registration of a domain name that is
identical to its competitor’s mark for its own use
is evidence of an intent to
disrupt Complainant’s business. This equates to bad faith use and registration
of the domain name pursuant
to Policy ¶ 4(b)(iii). See Surface Protection
Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent
likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
Respondent and
Complainant were in the same line of business in the same market
area).
The Panel thus
finds that Respondent registered and used the <redstartravel.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <redstartravel.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
August 25, 2003
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