DECISION

NCL Corporation Ltd. v. Yong Li

Claim Number:  FA0406000289327

PARTIES

Complainant is NCL Corporation Ltd. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright, PLLC, 1901 L Street NW, Suite 800, Washington, DC 20036-3506.  Respondent is Yong Li (“Respondent”), Post Office Box 904, Beijing, China 100029.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwncl.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 24, 2004; the Forum received a hard copy of the Complaint on June 29, 2004.

On July 1, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <wwwncl.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 July 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 2004 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@wwwncl.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 July 27, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwncl.com> domain name is confusingly similar to Complainant’s NCL mark.

2. Respondent does not have any rights or legitimate interests in the <wwwncl.com> domain name.

3. Respondent registered and used the <wwwncl.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, NCL Corporation Ltd., is one of the largest and best-known cruise line companies in the world.  Complainant offers cruises to locations around the globe on a fleet of twelve ships. 

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the NCL mark (Reg. No. 2,281,788 issued September 28, 1999 and Reg. No. 2,736,355 issued July 15, 2003).  Complainant has been using the NCL mark as early as the 1970s.

Complainant’s main website, located at the <ncl.com> domain name, provides cruise-related information and a computer database relating to ocean cruises.  In particular, it provides information relating to Complainant’s fleet of ships, cruise destinations and length of cruises, rates and reservations, and allows Internet users to confirm and cancel reservations.

Respondent registered the disputed domain name, <wwwncl.com>, on December 11, 2003.  Respondent is using the domain name to redirect Internet users to websites that provide links to various travel-related commercial websites, predominantly featuring those that compete with Complainant.  

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has documented that it has rights in the NCL mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce over the last thirty years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <wwwncl.com> domain name registered by Respondent is confusingly similar to Complainant’s NCL mark because the domain name incorporates Complainant’s NCL mark in its entirety and simply adds the letters “www.”   The mere addition of the letters “www” to Complainant’s mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Therefore, Complainant has established that the <wwwncl.com> domain name is confusingly similar to Complainant’s NCL mark pursuant to Policy ¶ 4(a)(i). 

Rights or Legitimate Interests

Respondent failed to contest Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name.  Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint as true.  See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Additionally, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent.  Respondent’s failure to fulfill its burden means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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).

Complainant asserts unrefuted evidence that indicates Respondent registered the subject domain name based upon its similarity to Complainant’s NCL mark.  Moreover, Respondent’s <wwwncl.com> domain name resolves to two websites that provide links to various travel-related websites, including those that compete with Complainant.  Because Respondent’s sole purpose in selecting the domain name was to cause confusion with Complainant’s NCL mark, its use of the domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor does it constitute any other fair use pursuant to Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Respondent is not authorized or licensed by Complainant to use the NCL mark in the domain name.  No evidence before the Panel suggests Respondent is commonly known by the <wwwncl.com> domain name pursuant to Policy ¶ 4(c)(ii).  Due to Respondent’s failure to contest the allegations of the Complaint, there is a presumption that Respondent is not commonly known by the domain name that is confusingly similar to Complainant’s registered mark.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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 Policy ¶ 4(a)(ii) has been satisfied.   

Registration and Use in Bad Faith

Respondent intentionally registered a domain name, <wwwncl.com>, that contains in its entirety Complainant’s NCL mark.  Respondent has engaged in the practice of typosquatting because the domain name takes advantage of Internet users who attempt to access Complainant’s business online but are redirected to Respondent’s websites when they inadvertently omit the period between the prefix “www” and Complainant’s mark.  Typosquatting, itself, is evidence of bad faith registration and use under the Policy.  See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that “[t]he absence of a dot between the ‘www’  and ‘canadiantire.com’ [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name); see also Black & Decker Corp. v. 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).

Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Specifically, uncontested evidence indicates that the subject domain name is used in connection with Respondent’s business.  Thus, the Panel infers that Respondent commercially benefits from its use of Complainant’s NCL mark in the confusingly similar domain name.  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).

Respondent is using the disputed domain name to provide links to various travel-related commercial websites, predominantly featuring cruise websites.  Complainant’s business offers cruise-related services.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark to offer goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

   

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwncl.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  August 4, 2004

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