The Complainant is Cruise America, Inc. of Mesa, Arizona, United States of America, represented by Greenberg Traurig, LLP, United States of America (“United States”).
The Respondent is Domain Manager, Domain Brokers of Saint Vincent, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 20, 2016. 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 the largest and leading recreational vehicle rental and sales company in North America with over 120 locations and 4,000 motorhomes. The Complainant has over 50,000 rentals a year and rents to consumers from more than 50 different countries. The Complainant is also one of North America’s largest sellers of late model used motorhomes. The Complainant owns and has exclusively and continuously used its CRUISE AMERICA trademark in the United States in connection with rental and sales of recreational vehicles, namely motor homes and travel trailers, since at least as early as July 16, 1988.
The Complainant’s advertising expenditures in connection with the CRUISE AMERICA Mark exceed one million dollars each year for the past three years and the Complainant has over 800,000 customers since at least as early as 1988. As a result of the Complainant’s continuous and exclusive use of its CRUISE AMERICA trademark for well over two decades, and extensive sales and advertising, the CRUISE AMERICA trademark has acquired invaluable fame, goodwill, and reputation in the United States.
Details of a number of United States registrations comprising or containing the Complainant’s CRUISE AMERICA trademark have been supplied to the Panel.
The disputed domain name has been registered on April 5, 2003. The disputed domain name resolves to an inactive site. Prior to the Complaint the disputed domain name resolved to a website that redirected internet users to a malware scam. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its CRUISE AMERICA trademark, containing the Complainant’s trademark in its entirety, with the mere addition of the non-distinctive prefix “www”, and the legally irrelevant “.com” indicator.
The Complainant alleges that it has no relationship whatsoever with the Respondent, and has not consented to registration or use of the disputed domain name by the Respondent. The Complainant also alleges that, to the best of its knowledge and belief, the Respondent has no rights to any trademark consisting of the term CRUISE AMERICA in the United States or any country, and nothing in the WhoIs records for the disputed domain name indicates that the Respondent is commonly known by the domain name or the CRUISE AMERICA trademark.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the operation of a website which directs users to websites which host scareware and malware. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
The disputed domain name incorporates the Complainant’s CRUISE AMERICA trademark in its entirety, with the mere addition of the element “www”. It is well-established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive element to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, “www” being the standard abbreviation of the term “world-wide web”, the Panel finds that “www” is clearly a descriptive or non-distinctive element. The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity provide by these proceedings to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainants’ wideley trademark was incorporated in its entirety, with no additions beyond a non-distinctive element and the legally irrelevant “.com” gTLD indicator, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
In the Panel’s opinion, the use of a disputed domain name in a website which directs users who have been confused into believing that they are communicating with the Complainant to websites containing scareware and malware is clearly potentially damaging to the Complainant, and constitutes use in bad faith.
The Panel, accordingly, finds that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy. 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 the Complainant.
George R. F. Souter
Sole Panelist
Date: June 3, 2016
Full & Egal Universal Law Academy