WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Caribbean Cruises Ltd. v. Gold Anchor Service and Gold Anchor Standards
Case No. D2003-0443
1. The Parties
The Complainant is Royal Caribbean Cruises Ltd., of Miami, Florida, United States of America, represented by Vorys, Sater, Seymour and Pease, LLP of United States of America.
The Respondent is Gold Anchor Service and Gold Anchor Standards, Webmaster, Vancouver, British Columbia, Canada.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2003. On June 10, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On the same say, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2003. The Response was filed with the Center on July 2, 2003.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 11, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Preliminary Issues
This Complaint concerns three domain names. According to the Registrar's WHOIS reports, the first of these is registered to a business named Gold Anchor Service. The remaining two are registered to a business named Gold Anchor Standards. The Complainant points out that the e-mail address and the mailing address for both registrants are identical and that in correspondence and its websites, the Respondent does not distinguish between the two entities as owners of the domain names. The Complainant therefore asserts that the person identifying itself under the two names is the same person. The Respondent does not contest this, and accordingly, the Panel proceeds on the basis that there is common ownership of the three domain names.
5. Factual Background
The Complainant is a well-known operator of luxury cruise liners operating cruises throughout the world. In June of 2002, the Complainant adopted the service mark "GOLD ANCHOR SERVICE" and included it in its 2003 cruise catalogue for Alaska and other northern destinations including Canada (Complaint Annex E). On March 27, 2002, the Complainant filed application at the U.S. Patent and Trademark Office for registration of the trademark "GOLD ANCHOR SERVICE" in respect of, inter alia, "cruise ship services". The application was published for opposition on October 22, 2002, and Notice of Allowance of the application was issued on January 14, 2003 (Complaint Annex D). The Panel notes that in the Complaint, the Complainant incorrectly identifies the filing date of its application as March 27, 2003. The Panel finds on the evidence of the Complaint Exhibit D that the filing date was in fact March 27, 2002.
No information is available as to the Respondent save that it is the registered owner of the domain names. The domain names , and were registered on February 27, 2003, March 1, 2003 and March 28, 2003 respectively.
On March 19, 2003, the Respondent e-mailed the Complainant as follows:
"Service web domain for sale
, are now for sale. With the launch of your new branding and standards program you may be interested in transferring these domain names to your company".
On March 21, 2003 and March 24, 2003, the Complainant sent e-mails to the Respondent seeking discussions with the Respondent in relation to the matter. On or prior to March 28, 2003, the Respondent posted on its website at a notice addressed to the Complainant and three of its competitors offering each of the domain names for sale at a price of $2,075,890 (Complaint Annex G). On April 7, 2003, the Complainant's attorney sent a letter of demand to the Respondent demanding transfer of the domain names. The Respondent replied by e-mail inter alia contesting the Complainant's trademark rights and offering to transfer the domain names for $28,000 (Complaint Annex K).
6. Parties Contentions
A. Complainant
The Complainant contends that it is the owner of the trademark "GOLD ANCHOR SERVICE" and that two of the domain names are identical with it and that the third domain name is confusingly similar to it and creates the same overall impression. The Complainant cites in support Visual Information Institute v. Vicon Industries, 209 USPQ 179.
The Complainant further asserts that it has not licensed or authorised the Respondent to use the Complainant's trademark and that the Respondent has failed to adduce any evidence as to the existence of any of the circumstances set out in paragraph 4(c) of the Policy or otherwise shown that the Respondent has any rights or legitimate interests in the domain names.
The Complainant further contends that the Respondent was aware of the Complainant's use and intending use of the GOLD ANCHOR SERVICES trademark and that its apparent purpose in registering the domain names and using the domain names in its Internet advertisement was for the purpose of selling the names to the Complainant or to a competitor of the Complainant for a price vastly in excess of its out-of-pocket costs directly related to domain names. The Complainant cites as further evidence of bad faith on the part of the Respondent, its failure to provide an adequate contact address to the Registrar.
B. Respondent
The Respondent contests the Complainant's claim to trademark rights on the basis that it does not yet have a registration, only a pending application, and that its use of the mark has been confined to the United States and has not extended to Canada.
The Respondent asserts that prior to being contacted by the Complainant it "had plans to use domain names for non-profit use", and that those plans were cancelled due to the Complainant's cease and desist letter. The Respondent denies that it registered the domain names in bad faith and asserts that it has never been a domain name reseller. The Respondent further contends that the Complainant is guilty of reverse domain name hijacking and that it only resorted to the filing of the Complaint after it had failed to negotiate a satisfactory price for transfer.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied on the evidence that the Complainant has established trademark rights in the trademark "GOLD ANCHOR SERVICE". Mere lodgment of a trademark application may not be enough to establish trademark rights in some cases but here, where the application has been allowed and the mark has been used for at least some months, such rights are established. The fact that such rights may not extend to Canada is not relevant for the purpose of the Policy. The domain names and are identical to the Complainant's trademark, save for the addition of the domain denominator. The domain name differs from the trademark only by the substitution of the descriptive word "standards" for the descriptive word "service". The dominant and distinguishing part of the Complainant's trademark "Gold Anchor" remains, and the impression conveyed by the expression "gold anchor standards" is substantially similar to that conveyed by the expression "gold anchor service".
The Panel therefore finds the domain name to be confusingly similar to the Complainant's "GOLD ANCHOR SERVICE" trademark.
B. Rights or Legitimate Interests
The Respondent has failed to rebut the Complainant's prima facie showing that the Respondent has no rights or legitimate interest in the domain names. The Respondent's assertion that it had "plans to use the domain name for non-profit use" is not credible and is not supported by any evidence, notwithstanding the Respondent's statement in its April 9, 2003 e-mail to the Complainant's attorneys that it had such evidence.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
The Respondent's use of the domain name as a website address for the purpose of advertising the domain names for sale and the use of each of the domain names in such advertisement clearly evidences the Respondent's purpose in registering the domain names as being for sale to the Complainant or one of its competitors. The price of more than $2,000,000 originally demanded, and even the subsequent negotiation offer of $28,000 are clearly vastly in excess of any documented out-of-pocket costs directly related to the domain name. The circumstances therefore fall within paragraph 4(b)(i) of the Policy and evidence the Respondent's bad faith registration and use of the domain name is established.
In consequence of the above, the Panel finds the Complainant has proved all of the elements required by paragraph 4(a) of the Policy.
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, , and be transferred to the Complainant.
Desmond J. Ryan
Sole Panelist
Dated: July 17, 2003
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