The Complainant is Incorporated of Norwalk, Connecticut, United States of America, represented by Downs Rachlin & Martin, PLLC, United States of America.
The Respondents are Domains by Proxy, Inc. of Arizona, United States of America / Siddharth Shah of Mumbai, Maharashtra, India, MOS Utility, Chirag Shah of Mumbai, Maharashtra, India. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, Inc. The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On October 1, 2010, the Center transmitted by email to GoD, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. a request for registrar verification in connection with the disputed domain names. On October 1, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR sent its verification response, confirming that the Respondent MOS Utility, Chirag Shah is listed as the registrant for disputed domain name and providing the contact details. On October 2, 2010, GoD, Inc. sent its verification response, confirming that the Respondent Siddharth Shah is listed as the registrant for disputed domain name 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 October 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2010. On October 23, 2010, the Center received an email communication from the Respondent Siddharth Shah. However, the Respondents did not submit any formal response. Accordingly, the Center notified the Respondents’ default on November 2, 2010. On November 3, 2010, the Center received an email communication from the Respondent Siddharth Shah stating: “[p]lease note that on 29th October 2010 we have shut down our domain “www.”.
The Center appointed David Perkins as the sole panelist in this matter on November 10, 2010. 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.
For the purposes of this administrative proceeding, the Panel finds that on balance of probabilities, the disputed domain names are held in common control in accordance with paragraph 3(c) of the Rules. 4. Factual Background 4.A. The Complainant
4.A.1 The Complainant commenced business in April 1998. It is a publicly traded company, which provides Internet-based travel and accommodation services under its PRICELINE and PRICELINE.COM service marks. Customers can book reservations for airline tickets, hotel rooms, rental cars and other travel and vacation services on its “www,” website. The NAME YOUR OWN PRICE SYSTEM operated by the Complainant at that website enables customers to set the price they are prepared to pay for such services after entering specific criteria such as travel dates, itineraries, locations and classes of service. If the customer’s offer is accepted, the reservation is automatically booked. The Complainant’s customers may also book transport and accommodation by selecting services with disclosed prices from a list generated by the Complainant.
4.A.2 The PRICELINE and PRINCELINE.COM brand names are very well known in both the United States (“US”) and elsewhere. In addition to its extensive US operations, the Complainant owns and operates, inter alia, ; Priceline Europe and has an interest in Priceline Hong Kong, Priceline Singapore and Priceline Taiwan, which are operated by Hutchinson-Priceline Ltd.
4.A.3 Since its launch in 1998, the Complainant has advertised extensively, using for over a decade the well known action William Shatner, best known for his roles in the Star Trek and Boston Legal television series. Since 2003, the Complainant has spent over USD350 million on advertising including (i) national radio and television advertisements; (ii) newspapers, such as USA Today and magazines; and (iii) Internet advertising on both its own and third party websites.
4.A.4 The Complainant’s PRICELINE business has been favourably reviewed by, for example, Yahoo Internet Life, where it was recommended as “The Best Travel Deal on the Web” in 2003 and as one of the “5 Best Travel Sites” on the Internet by the magazine Budget Travel in 2009. In the last three years, approximately 37 million bookings for travel, transport and vacation services have been made through the Complainant’s website in the United States alone.
The PRICELINE and PRICELINE.COM service marks
4.A.5 The Complainant is the owner of 101 service mark registrations for PRICELINE and 11 service mark registration for PRICELINE.COM in numerous countries. The PRICELINE mark is registered in 60 countries and the PRICELINE.COM in Canada, Japan and the United States of America. These are scheduled to the Complaint. Those registrations include the following:
Country Reg. No. Mark Class(es) Application and Reg./ Dates
India
794,619
PRICELINE
16
Filed: March 10, 1998
Registered: August 22, 2005
India
1,669,678
PRICELINE
39 and 42
(Registered) March 27, 2008
United States of America
2,272,659
PRICELINE
39 and 42
Filed: December 27, 1998 Registered: August 24, 1999
United States of America
2,481,112
PRICELINE.COM
39 and 42
Filed: October 10, 1997
Registered: August 28, 2001
United States of America
2,481,752
PRICELINE.COM
42 and 26
Filed: January 21, 2000
Registered: August 28, 2001
United States of America
3,357.458
PRICELINE EUROPE
39 and 43
Filed: October 28, 2005
Registered: December 18, 2007
United States of America
2,481,751
PRICELINEMORTGAGE
36
Filed: January 21, 2000
Registered: August 28, 2001
United States of America
3,757,066
PRICELINE NEGOTIATOR
39 and 43
Filed*: June 18, 2009
Registration: March 9, 2010
* First used in commerce in January 2007
4.A.6 The Complainant also owns over 400 domain name registrations which include the PRICELINE and PRICELINE.COM mark and variations thereof. Those domain names include and .
4.A.7 The Complainant submits that its PRICELINE and PRICELINE.COM marks are famous as defined under the US Lanham Act, 15 USC 1125(c), section 43(c) by reason of the length of time those marks have been used, the extensive advertising and promotional efforts featuring those marks and the many millions of bookings that have been made through its PRICELINE website. 4.B. The Respondent
4.B.1 In the absence of a Response, all that is known about the Respondents is that which is set out in the Complaint.
4.B.2 The Respondents MOS Utility and Chirag Shah are the original registrants of the disputed domain name . That domain name was registered on June 24, 2009. The address of the Registrants is given in the WhoIs records as Madad, Mumbai, Maharashtra, India.
4.B.3 As of April 8, 2010 the registrant of that disputed domain name was recorded in the WhoIs database as Multilink Online Services also of Madad, Mumbai.
4.B.4 The Respondent Domain by Proxy, Inc of Scottsdale, Arizona, United States was listed as the registrant of the disputed domain name at the time this Complaint was filed. This disputed domain name was registered on June 1, 2009.
4.B.5 The Complainant believes that the true registrant of that disputed domain name is Mr Siddarth Shah of Maharashtra and that Mr Siddarth Shah and Mr Chirag Shah may be one and the same person, or that they are related.
4.B.6 The Complaint states that until recently, both the disputed domain names have resolved to the same website featuring the PRICELINE TRAVEL HOUSE mark and offering travel, transport and accommodation services. However, currently the Complaint states that the PRICELINE TRAVEL HOUSE mark is no longer featured on the website to which the resolves. However, the website to which that domain name now resolves continues to contain the domain name in the source code. The website to which resolves continues to use the PRICELINE TRAVEL HOUSE mark. 4.C. Pre-Complaint correspondence
The Complainant exhibits cease and desist letters sent to the Respondents by its US and Indian trademark counsel. Those letters were dated August 21, 2009; February 25, 2010 and April 20, 2010. No response has been received from any of the Respondents to those letters. The Complainant states that its Indian counsel has attempted to make contact with the Respondents by telephone but without success. The Complainant is advised by its Indian counsel that the telephone number in the WhoIs database for the current registrant of the disputed domain name , Multilink Online Services, is not valid and may never have been valid. 5. Parties’ Contentions A. Complainant 5.A.1. Confusingly Similar
5.A.1.1 Because the two disputed domain names incorporate the PRICELINE service mark, with the addition of descriptive words “house”, “travel” and “travels”, the Complainant’s case is that those domain names are confusingly similar to that well known service mark. Further, since the words “travel” and “travels” are descriptive of the Complainant’s business carried on under the PRICELINE service mark, use of those words together with that mark is, the Complainant says, only likely to exacerbate such confusing similarity.
5.A.1.2 The Complainant cites two decisions under the Policy where the addition of the word “shredding” and the place name, Cancun (in Mexico) to the PRICELINE service mark have been held to be confusingly similar. They are P Incorporated v ShredEx, WIPO Case No. D2010-1042, where the disputed domain name was and Incorporated v. Sigfredo Alviera,WIPO Case No. D2007-1273, where the disputed domain name was . 5.A.2. Rights or Legitimate Interests
5.A.2.1 Both disputed domain names were registered in June 2009 and the Complainant has neither licensed nor otherwise authorised use of the PRICELINE service mark in relation to those domain names.
5.A.2.2 Further, the Complainant says that the Respondents are not able to demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply to this proceeding. Specifically, unuathorised use of the PRICELINE service mark in the disputed domain names for the purpose of a competitive business cannot amount to a bona fide offering of services under paragraph 4(c)(i) of the Policy.
5.A.2.3 For the same reason, in relation to paragraph 4(c)(iii) of the Policy, unauthorized use by the Respondents of the PRICELINE service mark for such business is neither fair nor non-commercial and its clearly intended to misleadingly divert consumers and to trade off the reputation of the PRICELINE mark.
5.A.2.4 This is not changed by the fact that the website to which the disputed domain name resolved on September 29, 2010 is now captioned HERITAGE TRAVEL instead of PRICELINE TRAVEL HOUSE.
5.A.2.5 Finally, the Complainant says there is no evidence that the Respondents, or any of them, could bring themselves within the paragraph 4(c)(ii) of the Policy. 5.A.3. Registered and Used in Bad Faith
5.A.3.1 First, the Complainant says that it is just not credible that the Respondents were unaware of the well-known PRICELINE service marks when registering the disputed domain names in June 2009. This is still less credible when those domain names are used for a competing business to that which the Complainant has established since 1998 and has used worldwide under and by reference to the PRICELINE service mark.
5.A.3.2 Furthermore, the Complainant’s case is that the circumstances set out in paragraphs 4(b)(iii) and (iv) of the Policy are demonstrated by the facts in this case. In support of that case, the Complainant states that registration of the disputed domain names could only have been with the intent of profiting from the Complainant’s goodwill in its well-known marks. The disputed domain names are plainly, the Complainant says, intended to attract Internet users to the travel sites to which those domain names resolve with a view to confusing such users and to disrupt the flow of business to the Complainant’s legitimate website “www.”.
5.A.3.3 This is further demonstrated by the prominent use of PRICELINE TRAVEL HOUSE at the website to which the disputed domain name resolves and to which both disputed domain names resolved as at August 26, 2009.
5.A.3.4 Even though the disputed domain name no longer resolves to a website making such use of PRICELINE TRAVEL HOUSE – see, paragraph 5.A.2.4 above – the replacement wording HERITAGE TRAVEL does not appear on the source code for the website where continues to be featured. 5.B. Respondents
As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondents’ domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondents’ rights or legitimate interest in the disputed domain names.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the domain names in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Confusingly Similar
6.5 First, the Complainant clearly has rights in the PRICELINE service mark. There are registered PRICELINE service marks in 60 countries worldwide. Those registered in the United States and in India, the countries where the Respondents are located, date from 1998, the year that the Complainant’s business was established. In the Panel’s view, the Complainant’s PRICELINE mark is clearly a very well-known service mark.
6.6. The two disputed domain names incorporate that service mark in its entirety. The suffixes “travel”, “travels” and “house” are generic words, which do not avoid confusing similarity with the distinctive and well-known PRICELINE prefix.
6.7 In the circumstances, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 In the absence of a Response, there is nothing to indicate that the Respondents could demonstrate rights to or legitimate interests in the disputed domain names.
6.9 The Respondents’ use of the Complainant’s PRICELINE service mark for the disputed domain names is neither licensed, nor otherwise authorised by the Complainant. Furthermore, the disputed domain names are confusingly similar to that service mark. Still further, the Complainant’s PRICELINE service mark is so well known that the disputed domain names could not have been registered in June 2009 in ignorance of that mark. Consequently, the Respondents’ use of the disputed domain names for the travel, transportation and accommodation services offered at the websites to which those domain names resolve cannot be a bona fide offering of such services.
6.10 Nor can it be said that such use of the disputed domain names is a legitimate or fair use. On the evidence on record, there can be no conclusion other than that the Respondents’ intention is to trade off the Complainant’s well-known PRICELINE brand for commercial gain and to mislead and divert consumers from the Complainant’s legitimate “www.” website.
6.11 Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.12 The Complainant’s case is well made out. On the evidence set out in paragraph 5.A.3 above, the Panel has no hesitation in finding registration and use in bad faith under both paragraphs 4(b)(iii) and (iv) of the Policy. Accordingly, the Complaint satisfies the two requirements of 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 names, and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: November 24, 2010
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