WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Global Access v. Nhan Ho Case No. D2009-0927 1. The Parties
The Complainant is Global Access of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Renova, Ltd., Spain.
The Respondent is Nhan Ho of San Jose, California, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2009. On July 10, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Disputed Domain Name. On July 13, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on August 10, 2009. 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. Factual Background
The Complainant is Global Access of Douglas, Isle of Man, United Kingdom. The Complainant holds a United States PTO (“USPTO”) trade mark registration for SKY TRAVEL INC., registration number 3061950. The Complainant uses the SKY TRAVEL INC. trade mark in commerce in connection with travel arrangements.
The Respondent is Nhan Ho, San Jose, California, United States. The Respondent registered the Disputed Domain Name on May 23, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant supports this contention by reference to the fact that it is the proprietor of SKY TRAVEL INC. trade mark, USPTO registration number 3061950. The Complainant also submits that it is the proprietor of a Benelux trade mark application for SKY TRAVEL, application number 1179404.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent supports this contention by reference to the fact that the Respondent is not commonly known by the name “Sky Travel Inc.” The Complainant further notes that the Respondent is not affiliated or related to the Complainant in any way.
The Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant supports this submission by reference to the fact that the web site to which the Disputed Domain Name resolves is merely a list of sponsored links to external web sites, some of which are competitors of the Complainant.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. The Complainant submits that the Respondent is deliberately using the Disputed Domain Name for commercial gain to attract Internet users to its web site based on a likelihood of confusion with the Complainant's SKY TRAVEL INC. mark.
The Complainant contends that the Respondent acquired and began unauthorized use of the Disputed Domain Name long after the Complainant's adoption, use and registration of the mark. B. Respondent
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary. 6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant holds a USPTO trade mark registration for SKY TRAVEL INC. in connection with the provision of travel arrangement services. The Panel is therefore satisfied that the Complainant has provided sufficient evidence of its ownership of registered trade mark rights in the SKY TRAVEL INC. mark.
The Disputed Domain Name is made up of the registered trade mark SKY TRAVEL INC. to which the generic top level domain “.com” has been added. The Panel in SENSIS Pty Ltd, Research Resources Pty Ltd. v. Kevin Goodall,WIPO Case No. D2006-0793 noted that;
“To make a true comparison between a trade mark and a domain name, the suffix of the domain name is ignored, enabling the real substance of the two expressions to be compared”.
The Panel is therefore satisfied that the “.com” generic top-level domain does not serve to distinguish the Disputed Domain Name from the Complainant's registered trade mark. The Panel therefore finds that the Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark and the Complainant has satisfied paragraph 4 (a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for the Respondent to demonstrate that it has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the Respondent of the dispute, use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) Where the Respondent as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) Where the Respondent is making a legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is generally regarded as prima facie evidence if; (a) a complainant shows that the disputed domain name is identical or confusingly similar to the complainant's trade mark; (b) the respondent is not commonly known by the disputed domain name; and (c) the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark). Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
The Panel notes that the Disputed Domain Name is identical to the Complainant's SKY TRAVEL INC. mark. The Panel accepts the Complainant's contentions that the Respondent is not commonly known by the Disputed Domain Name and that the Respondent has never been authorized by the Complainant to use the Complainant's registered trade mark. The Panel is therefore satisfied that the Complainant has provided sufficient prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has failed to file a Response to the Complaint. It remains for the Panel to determine whether the Respondent has rights or legitimate interests in the Disputed Domain Name.
The Complainant has provided evidence that the web site to which the Disputed Domain Name resolves is a portal displaying links to third party web sites, a number of which are competitors of the Complainant. The Panel is willing to infer, without any evidence to the contrary having been put forward by the Respondent, that on the balance of probabilities, the use of the web site to which the Disputed Domain Name resolves does not constitute a bona fide offering of goods or services but rather is an attempt to exploit the reputation of the Complainant's mark by using an identical Domain Name to attract Internet users to third-party web sites for commercial gain.
Paragraph 4(c)(ii) of the Policy is not satisfied as there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name. Neither is there any evidence that the Respondent has been making a noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
In all the circumstances the Panel therefore finds the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and as such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website 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 the respondent's website or location or of a product or service on respondent's website or location.
For the purposes of paragraph 4(b)(iv) of the Policy the Complainant contends that the Respondent is deliberately using the Disputed Domain Name for commercial gain to attract Internet users to its web site based on a likelihood of confusion with the Complainant's mark.
The Panel rejects the Complainant's contention, based on the Panel's decision in mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc. WIPO Case No. D2007-1141, that the Respondent should have carried out searches to determine whether the Disputed Domain Name would infringe trade mark rights. The Panel distinguishes this case from the decision in mVisible Technologies, Inc. on the basis that, as the Complainant has provided no evidence that the Respondent regularly registers domain names for use as pay-per-click landing pages. The Respondent cannot have been expected to carry out searches to determine if the Disputed Domain Name infringed trade mark rights.
However, in the absence of any evidence to the contrary, the Panel is willing to infer the Complainant's contention that the Respondent had knowledge of the Complainant's SKY TRAVEL INC. trade mark when it registered the Disputed Domain Name. The fact that the Disputed Domain Name is identical to the Complainant's mark and is not merely made up of the descriptive terms “sky” and “travel” suggests that the Respondent had the Complainant's trade mark in mind when registering the Disputed Domain Name.
The Panel notes that the Complainant has provided no evidence that it has traded under the SKY TRAVEL INC. mark. Nonetheless, the Panel is willing to infer bad faith from the combination of facts whereby; the links from the Respondent's web site are in relation to similar services for which the trade mark is registered, the Respondent registered the Disputed Domain Name over two years after the Complainant's SKY TRAVEL INC. mark was registered, the failure of the Respondent to reply to the Complaint and the fact that the Disputed Domain Name is identical to the Complainant's United States registered trade mark and the Respondent is also based in the United States.
In the absence of any evidence to the contrary the Panel therefore infers that the Respondent did have an intention to mislead Internet users by creating the false impression that there is an association between the Complainant and the web site to which the Disputed Domain Name resolves for the purposes of generating click-through revenue. The use and exploitation of trade marks to obtain click-through revenue from the diversion of Internet users has in numerous decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy: L' Oreal, Biotherm, Lancome Parfumes et Beauté & Cle v. Unasi Inc, WIPO Case No. D2005-0623.
The Panel infers that in all these circumstances the Complainant has established that the Respondent registered and used the Disputed Domain Name in bad faith.
Accordingly the Panel considers that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. 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 name, be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: August 24, 2009
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