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Generic Top Level Domain Name (gTLD) Decisions |
Cendant Corporation v. LaPorte Holdings,
Inc.
Claim
Number: FA0410000348124
Complainant is Cendant Corporation (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is LaPorte Holdings, Inc. (“Respondent”), 2202 S. Figueroa St. Suite 721, Los Angeles, CA 90007.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cendantfriendsandfamily.com>, registered
with Nameking.com, Inc.
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 electronically on October
21, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 22, 2004.
On
October 25, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <cendantfriendsandfamily.com>
is registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified
that Respondent is
bound by the Nameking.com, 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
October 26, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 15, 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@cendantfriendsandfamily.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
November 30, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Sandra Franklin 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 <cendantfriendsandfamily.com>
domain name is confusingly similar to Complainant’s CENDANT mark.
2. Respondent does not have any rights or
legitimate interests in the <cendantfriendsandfamily.com> domain
name.
3. Respondent registered and used the <cendantfriendsandfamily.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Cendant Corporation, is the parent company of numerous subsidiaries, including
some of the world’s leading providers
of travel and real estate related
services. Cendant and its subsidiaries
have approximately 90,000 employees worldwide and provide services to
businesses and consumers in over
100 countries.
The CENDANT mark
was created by Complainant in 1997. It
is a purely coined term having no meaning other than to indicate the source of
the products and services offered by Complainant
and it subsidiaries. Complainant has registered numerous marks
with the United States Patent and Trademark Office (“USPTO”), including Reg.
No. 2,390,176
(issued September 26, 2000), Reg. No. 2,392,546 (issued October
10, 2000), Reg. No. 2,455,652 (issued May 29, 2001), Reg. No. 2,702,610
(issued
April 1, 2003) and Reg. No. 2,736,922 (issued July 15, 2003). Complainant also has registered trademarks
in 19 additional countries. Complainant
has used the CENDANT mark continuously since December 1997.
In June 2004,
Complainant established an employee benefit program called “The Cendant Friends
and Family Travel Program,” that offers
employees of Cendant discounted prices
on travel and lodging. This benefit was
made available to employees through the website located at the domain name
<cendantfriendsandfamilytravel.com>.
Respondent
registered the <cendantfriendsandfamily.com> domain name on June
15, 2004. The disputed domain name
resolves to a website displaying numerous links to other websites offering
travel, vacation and car rental
services in competition with Complainant.
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 that it has rights in the CENDANT mark through registration with
the USPTO and through the continuous
use of the mark in commerce since
1997. 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 <cendantfriendsandfamily.com>
domain name incorporates Complainant’s CENDANT mark in its entirety. In the instant case, Respondent added the
phrase “friends and family” to the Complainant’s mark in the disputed domain
name. Complainant uses the “friends and
family” moniker in reference to its employee benefit program. Respondent’s additional terms do not add any
distinctive features capable of overcoming a claim of confusing similarity
pursuant to
Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant
combined with a
generic word or term; see also
Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) finding
that because the subject domain name incorporates the VIAGRA mark in its
entirety, and deviates
only by the addition of the word “bomb,” the domain name
is rendered confusingly similar to Complainant’s mark.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a
complainant’s allegations allows a panel to accept
all of the complainant’s
reasonable allegations and inferences as true; see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true.
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate
interest in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the disputed
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly
known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply; see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate interests where
(1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior rights
in the domain name precede Respondent’s registration; (3) Respondent is not
commonly known by the
domain name in question.
Additionally, a
website that uses a domain name, which is identical or confusingly similar to a
third-party mark, to market goods
or services that directly compete with those
offered by the third party under its mark has been found to be neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s domain name resolves to a website featuring links to
other businesses offering travel, vacation and car rental services
in
competition with Complainant. Thus,
Respondent’s use of a domain name confusingly similar to Complainant’s mark 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 of the domain
name pursuant to Policy
¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation
of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) finding that
Respondent’s use of the disputed domain name to redirect Internet users to
a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent had actual or constructive knowledge of Complainant’s mark, due
to the obvious relationship between
the content of the website to which the
disputed domain name resolves and Complainant’s mark. Therefore, Respondent’s registration and use of the disputed
domain name, despite knowledge of Complainant’s interests in the CENDANT
mark,
constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can
infer an intent to confuse"; see also 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.
Furthermore,
Respondent is capitalizing on the goodwill of the CENDANT mark by using the
disputed domain name to divert Internet users
to a website that features links
for competing services. The Panel
infers that Respondent commercially benefits through the use of the domain
name. Since the disputed domain name
contains entire versions of Complainant’s mark and is used for something
completely unrelated to its
descriptive quality, a consumer searching for
Complainant would become confused as to Complainant’s affiliation with the
resulting
website. Therefore, Respondent’s
opportunistic use of the disputed domain name represents bad faith registration
and use under Policy ¶ 4(b)(iv). 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 Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where Respondent
directed Internet users seeking Complainant’s site to
its own website for
commercial gain.
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 <cendantfriendsandfamily.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 14, 2004
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