Complainant is BookIt.com, Inc. of Florida, United States of America represented by Akerman Senterfitt, United States of America.
Respondent is PrivacyP of Queensland, Australia / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2013. On May 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 6, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 10, 2013.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on May 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 3, 2013.
The Center appointed Halvor Manshaus as the sole panelist in this matter on June 12, 2013. 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
Complainant is a US company with its head offices in Panama City Beach, Florida.
Complainant is a leading online travel company, offering a range of services within the field of travels, including airfare, hotel reservations and vacation packages. Since 2004, Complainant has offered its services through the website , with the mark BOOKIT.COM featuring prominently on said website ever since the creation of the site.
Complainant is the owner of several trademark registrations for the mark BOOKIT.COM, including US Trademark Registrations no. 3,110,875 (registered July 4, 2006); no. 3,704,196 (registered November 3, 2009); no. 4,270,578 (registered January 8, 2013) and no. 4,266,515 (registered January 1, 2013); as well as International Trademark Registration no. 975020. Further, Complainant has used BOOKIT.COM as its service mark since 2004.
Respondent is ICS Inc., a Cayman Islands based company, having registered the disputed domain name via the Registrar PDR Ltd. /D/B/A Publicdomainr.
The disputed domain name was registered on June 17, 2012. 5. Parties’ Contentions A. Complainant
Complainant holds that the disputed domain name incorporates Complainant’s trademark and service mark BOOKIT.COM, and is confusingly similar thereto. The mere addition of the generic term “extranet” is not sufficient in order to avoid confusing similarity.
Further, Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known as “”. In addition, Complainant holds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services; nor does Respondent make a legitimate noncommercial or fair use of the disputed domain name.
Moreover, Complainant holds that the disputed domain name was registered and is being used in bad faith. Complainant finds, under reference to the fact that Respondent has had 64 separate panel rulings against it from the WIPO Center and the National Arbitration Forum, that Respondent is a serial cybersquatter. Further, the disputed domain name refers to a so-called “parking page” website, which generates pay-per-click revenue for Respondent. The website contains, inter alia, advertisements for goods and services identical to those offered by Complainant. Additionally, Complainant holds that the website refers to malicious malware.
Thus, Complainant has requested that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel finds that Complainant has successfully demonstrated its right to the mark BOOKIT.COM, through both registration and use of said mark.
Complainant claims that the disputed domain name incorporates the mark BOOKIT.COM in full. The Panel notes that one must ask whether the generic top level domain (gTLD) suffix “.com” can be claimed to be a part of the disputed domain name per se. As mentioned, Complainant has rights to the mark BOOKIT.COM, but not necessarily to the mark BOOKIT. The question is thus whether the Panel must take into account the generic TLD “.com” when considering the issue of identity or confusing similarity of the disputed domain name to Complainant’s mark.
In previous UDRP cases, the TLD suffixes have generally been ignored when the panel has examined whether a domain name is confusingly similar to a trademark. Reference is made to Mozilla Foundation and Mozilla Corporation v. Limpkin Walker,WIPO Case No. DME2008-0007, where the panel stated that “(…) the addition of the ccTLD “.me” is without legal significance from the standpoint of comparing the Domain Name to the FIREFOX mark because use of a ccTLD (or gTLD) is required of domain name registrants, “.me” (…)”.
If the same principle were to be applied in the present case, the relevant part of the disputed domain name would be “extranetbookit”, and the question would then be whether “extranetbookit” is identical to or confusingly similar to Complainaint’s mark BOOKIT.COM. Reference is made to GmbH v. Alan Lin,WIPO Case No. DME2009-0008, where the ccTLD extension “.me” was also considered in assessing whether the domain name was confusingly similar to the complainant’s trademark.
The Panel finds in this case the applicable TLD suffix should not be ignored as it is part of Complainant’s trademark, and the Panel finds it likely that Respondent has registered the disputed domain name in this exact manner as to try and incorporate Complainant’s trademark in full without actually incorporating the trademark in the domain name per se. As pointed out by Complainant, 64 separate panels have ruled against Respondent in domain name disputes since March 2012, and said panel decisions show that Respondent has made a habit out of registering domain names that are highly similar to various trademarks.
Thus, the disputed domain name incorporates the term “bookit” from Complainant's mark, and, when seen together with the “.com” suffix, the disputed domain name does incorporate Complainant’s mark in full.
The Panel further agrees with Complainant that the mere addition of the generic and descriptive term “extranet” is not sufficient to avoid a confusing similarity between the disputed domain name and Complainant’s mark, cf. Hoffmann-La Roche Inc. v. One Step Closer, Bob Dilan,WIPO Case No. D2008-0719; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; and Siemens AG v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-1163.
Moreover, as held by Complainant, an “extranet” is a private network used to share a part of a business’ information with suppliers, customers, partners, affiliates, etc. The disputed domain name indicates that the website corresponding to the disputed domain name is a subsite to or a part of Complainant’s website by form of an “extranet” site. The Panel is of the opinion that the term “extranet” indeed is both a generic and descriptive term in this respect, as it simply is a term used for describing such private networks that are quite commonly used by businesses when sharing information with, inter alia, their suppliers and customers. The disputed domain name therefore implies that the website corresponding to the disputed domain name is a type of extranet site that is part of or affiliated to Complainant and/or Complainant's website “www.”, meaning that the disputed domain name may mislead web users to believe that there actually is an affiliation between Complainant and Respondent.
As further discussed below, being associated with Respondent may have adverse effects for Complainant and its trademark, especially when considering the fact that the website corresponding to the disputed domain name appears to have been used as a forwarding site to malware.
As such, the addition of the term “extranet” in the disputed domain name is not sufficient to avoid a confusing similarity between said domain name and Complainant’s mark BOOKIT.COM.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark “BOOKIT.COM”. B. Rights or Legitimate Interests
The Panel finds that Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
The disputed domain name does not correspond to any trademark registered by Respondent, nor is Respondent known as “extrametbookit” or any other name containing the word “bookit” or the mark “BOOKIT.COM”. Further, Respondent is not an authorized dealer of any services or products offered by Complainant. On the contrary, the website corresponding to the disputed domain name is a parking page for a website generating pay-per-click revenue. Also, the site has seemingly invited site users to download malicious software in the form of malware. The website also includes advertisements for services that are competitive with those of Complainant.
Respondent’s website must be characterized as a “parking page” from which Respondent seeks to achieve commercial gain through the pay-per-click ads; which in this case does not give rise to rights or legitimate interests in the disputed domain name. Reference is made to Tractor Supply Co. of Texas, LP and Tractor Supply Company v. A Domain Privacy/Transure Enterprise Ltd.,WIPO Case No. D2011-0487, and MAACO Enterprises Inc. v. IP Admin/DNAV ASSOCS,WIPO Case No. D2008-0009. The Panel finds that Respondent cannot claim any bona fide or legitimate use of the mark.
It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph 4(c) of the Policy, and if a respondent fails to rebut a complainant’s prima facie case, a complainant is generally deemed to have satisfied this element of the Policy, cf. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The presented evidence and circumstances referred to by Complainant is, in the Panel's view, sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name.
Thus, the Panel concludes that Respondent does not have any rights to or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
The website corresponding to the disputed domain name consists primarily of sponsored links, several of which relate to services that are competitive to those offered by Complainant. As a consequence, Respondent achieves or may achieve commercial gain when web users, searching for services offered by Complainant, are diverted to the websites corresponding to the disputed domain name.
It follows from previous UDRP decisions that the registration and use of a domain name to re-direct Internet users to website that offer products and services in competition with complainant’s services, constitutes a bad faith registration and use. The Panel refers to Encyclopedia Britannica Inc. v. S,WIPO Case No. D2000-0753 and YAHOO! Inc. v. David Murray,WIPO Case No. D2001-1319.
Further, the website under the disputed domain name includes a link entitled “Inquire about this domain”. The link refers to a page on which one can ask for a price request and submit an offer for the disputed domain name. This is further evidence of registration and use in bad faith, cf. Rawlings Sporting Goods Company, Inc. v. Standard Bearer Enterprises Limited,WIPO Case No. D2010-1127 and Mamar, Inc. v. Order Your Domains,WIPO Case No. D2005-1163.
The Panel also finds it unlikely that Respondent was not aware of Complainant’s mark at the time of registration, given the similarities between the disputed domain name and Complainant’s mark.
Further, the Panel notes that Complainant has submitted documentation indicating that the website corresponding to the disputed domain name has previously linked to malware, although the Panel cannot find evidence of there currently being links to malware at the site. Previous UDRP decisions, such as Twitter, Inc. v. Moniker Privacy Services/accueil des solutions inc,WIPO Case No. D2013-0062, state that distribution of malware demonstrates that a domain name has been registered and is being used in bad faith. The Panel puts some weight on the seemingly previous inclusion of malware on the site, when assessing the question on bad faith.
Additionally, the Panel refers to the fact that Respondent has been part of at least 64 UDRP proceedings in the course of just over a year, and has demonstrated a systematic pattern of abusive registrations similar to that of a serial cybersquatter, cf. the WIPO Overview 2.0, paragraph 2.0, where it is stated that “A pattern of conduct can involve multiple UDRP cases with similar fact situations […]”.
Thus, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Halvor Manshaus
Sole Panelist
Date: June 26, 2013
Full & Egal Universal Law Academy