WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Trip.com, Inc. v. Daniel Deamone

Case No. D2001-1066

 

1. The Parties

Complainant is Trip.com, Inc., ("Complainant" or "Trip") a Delaware corporation located at 6436 South Racine Circle, Englewood, Colorado 80111, USA.

Complainant alleges that the Respondent is Daniel Deamone ("Respondent" or "Deamone") whose mailing address is P. O. Box 803, Niagara Falls, New York 14302, USA. Respondent is alleged to have an additional mailing address under the names D. N. Deamone and Daniel N. Deamone at Box 20300, St. Catharines, Ontario L2M 7W7, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <www-trip.com> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.

 

3. Procedural History

On August 27, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On August 29, 2001, the Center received hardcopy of the Complaint. On August 29, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On September 1, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

On September 3, 2001, the Center requested amendment of the Complaint. On September 6, 2001, the Center received an Amendment to the Complaint from Complainant via email. On September 11, 2001, the Center received the Amendment in hardcopy.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On September 12, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On October 3, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On October 11, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member Administrative Panel consisting of the Sole Panelist.

The Sole Panelist has received communication on October 11, 2001, from the Respondent disavowing any interest in the Domain Name.

 

4. Factual Background

Complainant Trip is an industry leader in the business of providing computerized on-line travel agency booking, reservation, information and support services, and travel-related goods in connection with its TRIP.COM trademark. Since 1996, Trip has continuously used the trademark TRIP.COM to identify its on-line travel agency booking, reservation, information and support services, and travel-related goods.

Trip offers a wide variety of goods and services in connection with its TRIP.COM trademark, including inter alia:

Travel agency services, namely, making reservations and booking for transportation by means of electronic communications networks;

Travel agency services, namely, making reservations and bookings for temporary lodging by means of electronic communications networks: providing interactive computer databases in the fields of travel information, transportation by air, train, bus or boat, musical events, theatrical events, comedic events, live dramatic events, films, sporting events, dining, art exhibitions, ground traffic, parking, shopping or destination information;

On-line retail store services featuring luggage, luggage carts, purses, wallets, maps, printed matter, namely, maps and books in the field of travel, travel clocks, irons, currency converters, voltage converters, travel accessories and other travel-related products, and providing information in the field of retail shopping by means of electronic communications networks;

Providing insurance brokerage services by means of electronic communications networks, and providing travel agency services, namely issuing travelerís checks by means of electronic communications networks;

Providing information in the fields of travel, transportation by air, train, bus or boat, ground traffic, parking or travel destinations by means of electronic communications networks;

Entertainment services, namely, providing information in the fields of musical events, theatrical events, comedic events, live dramatic events, motion picture films, sporting events, and art exhibitions by of electronic communications networks; and

Providing information in the fields of dining by means of electronic communications networks.

Trip operates an Internet website at <www.trip.com>, where potential members can access information regarding the many travel agency booking, reservation and information services and other goods offered in connection with the TRIP.COM trademark. Trip members may interact with the travel agency services for booking a flight, reserving a car or hotel room, or gathering information about the next city to which they will travel. Members can also access all the information available to potential members regarding goods for sale, tracking of airline flights, and vacation packages amongst others.

Trip has trademark rights for the TRIP.COM mark both at common law and as registrations in the records of the U.S. Patent and Trademark Office. Trip is the owner of the following U.S. Trademark registrations and pending applications:

Mark

Reg. No.

Reg. Date

Goods and Services

THETRIP.COM

2,224,825

02/16/99

Travel agency services, namely, making reservations and booking for transportation by means of electronic communications networks; and Travel agency services, namely, making reservations and bookings for temporary lodging by means of electronic communications networks: providing interactive computer databases in the fields of travel information, transportation by air, train, bus or boat, musical events, theatrical events, comedic events, live dramatic events, films, sporting events, dining, art exhibitions, ground traffic, parking, shopping or destination information.

TRIP.COM

75/643,640

Filed: 02/19/99

On-line retail store services featuring luggage, luggage carts, purses, wallets, maps, printed matter, namely, maps and books in the field of travel, travel clocks, irons, currency converters, voltage converters, travel accessories and other travel-related products; and providing information in the field of retail shopping by means of electronic communications networks;

Providing insurance brokerage services by means of electronic communications networks; and providing travel agency services, namely issuing travelerís checks by means of electronic communications networks;

Travel agency services, namely, making reservations and booking for transportation by means of electronic communications networks; and providing information in the fields of travel, transportation by air, train, bus or boat, ground traffic, parking or travel destinations by means of electronic communications networks;

Entertainment services, namely, providing information in the fields of musical events, theatrical events, comedic events, live dramatic events, motion picture films, sporting events, and art exhibitions by of electronic communications networks; and

Travel agency services, namely, making reservations and bookings for temporary lodging by means of electronic communications networks; and providing information in the fields of dining by means of electronic communications networks.

TRIP.COM & Design

76/096,852

Filed: 07/26/00

On-line retail store services featuring travel related products.

TRIP.COM & Design

76/096,853

Filed: 07/26/00

Providing insurance brokerage services by means of electronic communication networks; and Providing on-line travel agency services, namely, issuing travelers checks by means of electronic communications networks.

Trip owns pending trademark applications 75/643,640 for the TRIP.COM mark, 76/096,852 for the TRIP.COM & Design mark, and 75/096,853 for the TRIP.COM & Design mark.

U.S. Trademark Serial No. 75/643,640 was published for opposition on December 19, 2000, and a Notice of Allowance was issued.

Tripís travel agency booking, reservation and information services were first rendered in connection with the TRIP.COM mark in October 1996.

Trip is a wholly owned subsidiary of Galileo International, Inc. ("Galileo"), one of the worldís leading providers of electronic global distribution services for the travel industry. Galileo acquired a 19% equity interest in Trip in 1999, and in March 2000, acquired the remaining 81% equity interest for $214.4 million in a combined cash and stock transaction.

Tripís travel agency booking, reservation, and information services offered in connection with its TRIP.COM mark enable individuals, corporate travel departments and others to interact with the TRIP.COM website to check the availability of travel arrangements, book travel arrangements, and retrieve information regarding travel destinations, carriers, etc. and equipment.

Trip has been judged the 4th best overall Internet based travel site among online travel sites according to Gomez Advisors, an internet quality measurement firm. Moreover, Trip.com ranks in the top 5 in the areas of customer confidence, relationship services, and onsite resources.

Since its inception, Trip has become extremely well known to independent business and leisure travelers, as well as to those operating in the travel industry. Trip has spent millions of dollars to market its website and the associated products and services offered. The company regularly advertises the <trip.com> website on sites such as the NYTimes.com, ChicagoSunTimes online, AOL, Hoovers online, as well as many others.

Trip is an industry leader in the development of travel management services for wireless devices. Trip provides branded and co-branded content to wireless carriers such as AT&T, Nextel, and Cingular by offering wireless travel management services for cell phones, personal digital assistants (PDAs) and two-way pagers. Trip spends in excess of $15,000,000 each year advertising and promoting its TRIP.COM mark. Since 1996, Trip has spent over $30,000,000 advertising and promoting its TRIP.COM mark. In addition, Trip spends a considerable amount of funds each year in print advertising to promote its website at <www.trip.com>.

Respondent has registered and used the Domain Name <www-trip.com> since August 31, 1999.

 

5. Partiesí Contentions

A. Complainantís contentions

(i) Complainant contends that it has common law rights and registrations of the trademark TRIP.COM. Complainant further contends that under U.S. law registration is "prima facie evidence of the: (1) validity of the registered mark; (2) registration of the mark; (3) registrantís ownership of the mark; and, (4) registrantís exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration." 15 U.S.C. ß1115.

(ii) Complainant argues that the Domain Name is confusingly similar to the TRIP.COM mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the trademark TRIP.COM with the addition of generic or nondescriptive terms.

Complainant further argues that Deamone has registered and used the Domain Name, which appropriates Tripís valuable and protectable TRIP.COM trademark without authorization and merely adds a generic element, "www-," resulting in the Domain Name which is nearly identical and confusingly similar to Tripís famous TRIP.COM mark. A court assesses the similarity of marks in terms of their sight, sound, and meaning. Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359, 1363 (9th Cir. 1993). Similarities are weighted more heavily than differences. The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955 (2nd Cir. 1996). The disputed domain name and Tripís TRIP.COM mark are identical aside from generic expression "www-". The generic expression "www-" carries no weight as an indicator of source before the U.S. Patent & Trademark Office. The sound of Deamoneís second-level domain name and Tripís TRIP.COM mark are nearly indistinguishable. The only difference is the generic prefix. The meaning of the words is virtually interchangeable. The Domain Name <www-trip.com> means an Internet website and TRIP.COM means an Internet website. There are no substantive differences. Accordingly, in terms of their sight, sound, and meaning, the disputed domain name and Tripís TRIP.COM mark are so similar that they are nearly identical.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant contends that Trip has never at any time authorized Deamone to use or register the Domain Name, or to use the mark TRIP.COM, either solely or in combination with the generic expression "www-."

Accordingly, Deamone has no rights or legitimate interests in the Domain Name because of his lack of authorization to use the TRIP.COM trademark, never being commonly known by the Domain Name, and admissions of likelihood of confusion. Deamoneís commercial use of the Domain Name, (i.e., conducting an auction for sale to highest bidder), misleadingly diverts consumers for commercial and financial gain and cannot be reasonably characterized as a "fair use" under any current standards.

(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Complainant asserts that Deamone registered and used the Domain Name in bad faith through intentional and willful misrepresentation and fraudulent deception of the Registrar, the public and Trip. Deamone had prior knowledge that Trip owned the TRIP.COM trademark and attempted to extort money from Trip far in excess of his out-of-pocket expenses therefore. Deamone is willing to create confusion in the marketplace by sale of the disputed domain name to a competitor of Trip. Deamone has and continues to engage in a pattern of trafficking in domain names. All of the above exhibit clear and consistent bad faith by Deamone.

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant or one of its competitors for valuable consideration in excess of the registrantís out-of-pocket costs.

Trip first became aware of Deamoneís activities on or about October 30, 2000, when in-house counsel for Tripís parent, Galileo International, received correspondence from the Trip support manager stating that Deamone registered and was offering for sale the Domain Name to Trip in an attempt to extort money from Trip in excess of Deamoneís out-of-pocket expenses directly related to the Domain Name. In the correspondence from Deamone, he admits that:

(1)  he has been shopping the Domain Name around and soliciting offers from others;

(2)  there would be confusion if anyone other than Trip owned the Domain Name; and,

(3)  he is ambivalent regarding who ultimately owns the Domain Name (i.e., the highest bidder will prevail).

The Domain Name was listed as open for bidding or for sale as of October 31, 2000, at <bigdomainauction.com> under the Travel/Tickets subsection. The Domain Name did not appear when printed as Deamone attempted to use technical methods to thwart his infringing and illegal practice. At this time, Deamone listed in excess of 500 domain names for sale.

On November 2, 2000, Trip authorized the dispatch of a cease and desist letter to Deamone via Express Mail and electronic mail. Trip advised Deamone of its trademark rights in connection with the TRIP.COM trademark. Trip demanded that Deamone cease and desist from offering for sale and claiming ownership in the Domain Name. Trip also demanded that Deamone take all actions necessary to transfer the registration of the Domain Name to Trip. To this date, Deamone has not responded to Trip regarding the November 2, 2000 cease and desist letter.

After receipt of the cease and desist letter, Deamone removed the Domain Name from the list of domain names for sale. Here, Deamone permitted the domain names for auction to be printed as the infringing marks had been removed. At this time, Deamone listed approximately 200 domain names for sale.

It is clear that Deamone trades in and sells domain names for commercial, monetary gain far in excess of his out-of-pocket costs directly related to the respective domain names. Deamoneís only intention when registering the Domain Name was to sell the Domain Name to Trip or the highest bidder.

Tripís registration further serves as constructive notice to all persons of Tripís rights in the mark. 15 U.S.C. ß1072. Where an alleged infringer adopts a mark with actual or constructive knowledge that it was anotherís trademark, courts will presume an intent to deceive the public. Brookfield Communications v. West Coast, 174 F.3d 1036 (9th Cir. 1999) (emphasis added). In the Internet context, courts have recognized that the intentional registration of a domain name knowing that the second-level domain is another companyís valuable trademark weighs heavily in favor of likelihood of confusion. Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp.2d 488, 500 (E.D.Va. 1999). Based on Tripís registration, Deamone had at least constructive knowledge that Trip has rights in the TRIP.COM mark. In light of Deamoneís admissions, Trip asserts that Deamone had actual knowledge that Trip had rights in the TRIP.COM mark. Thus, in registering the Domain Name, Deamone demonstrated a clear intent to deceive the public and derive commercial benefit from the reputation of Tripís TRIP.COM.

Complainant also asserts that Deamone registered and uses the disputed domain name to prevent the rightful owner of the TRIP.COM trademark from reflecting the mark in another corresponding domain name, and continues to engage in a pattern of such conduct.

Complainant further asserts that Deamone misrepresented his contact information, including amending the contact information after receipt of the November 2, 2000 cease and desist letter. On or about November 20, 2000, Deamone amended the Administrative and Billing contact information in connection with the Domain Name. Deamone now claims that he, or "p, t" is associated or affiliated with "trip.com" of Box 1800 in Houston, TX  14305, U.S.A. Trip strenuously asserts that Deamone, or any person or organization associated with him, is not authorized to use the TRIP.COM mark. Trip has been unable to verify any of Deamoneís administrative contact information. This is a blatant and obvious attempt to deceive any party, including Trip, from locating or communicating with Deamone.

B. Respondentís contentions

(i) Respondent does not dispute that the Complainant has common law rights and registrations of the trademark TRIP.COM.

(ii) Respondent does not dispute Complainantís contention that the Domain Name is identical with and confusingly similar to the TRIP.COM mark.

(iii) Respondent does not dispute Complainantís contention that Respondent has no rights to or legitimate interests in the Domain Name.

(iv) Respondent does not dispute Complainantís contention that Respondent registered or used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles the Sole Panelist is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Because both the Complainant and Respondent are domiciled in the United States or Canada and United States or Canadian courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States or Canada. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Agreement to Transfer

To the extent that Respondent has the mailing addresses under the names D. N. Deamone and Daniel N. Deamone at Box 20300, St. Catharines, Ontario L2M 7W7 Canada, he has indicated that he claims no interest in the Domain Name. Therefore, the Sole Panelist finds that under these circumstances the Domain Name should be transferred to Complainant.

To the extent that Respondent has a mailing address at P. O. Box 803, Niagara Falls, New York 14302 USA, the Sole Panelist will review the evidence proffered by Complainant to verify whether the essential elements of the claims are met.

Prove Up of Elements

Even though Respondent has failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Registered Trademark (Prima Facie).

Complainant contends that it has numerous registrations of the trademark TRIP.COM and, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the TRIP.COM mark. 15 U.S.C. ß 1115.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2001).

Respondent has not contested the assertions by Complainant that it has valid registrations of the trademark. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Complainant points out that Respondent has merely added "www-" to the TRIP.COM trademark. This phrase is a common expression to indicate the world wide web and does not distinguish the Domain Name from the TRIP.COM trademark.

Respondent has not contested the assertions by Complaint that the Domain Name is identical with and confusingly similar to the trademark.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís registered trademark.

The Sole Panelist notes that the entirety of the mark TRIP.COM is included in the Domain Name.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).

Here, Respondentís <www-trip.com> Domain Name is confusingly similar to the TRIP.COM mark because it incorporates the "trip.com" name in its entirety.

Adaptive Molecular Tech., Inc. v. Woodward and Thornton, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

The addition of the phrase "www-" is nondistinctive because it is commonly associated with the world wide web.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the TRIP.COM mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See, Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainantís uncontested allegation is that Respondent has no relationship with or permission from Complainant for the use of the TRIP.COM mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant contends that Trip has never at any time authorized Deamone to use or register the Domain Name, or to use the mark or trade name TRIP.COM, either solely or in combination with the generic expression "www-."

Accordingly, Deamone has made no bona fide use of the Domain Name because of his lack of authorization to use the TRIP.COM trademark, has never been commonly known by the Domain Name, and admits the likelihood of confusion. Deamoneís commercial use of the Domain Name, (i.e., conducting an auction for sale to highest bidder), misleadingly diverts consumers for commercial and financial gain and cannot be reasonably characterized as a "fair use" under any current standards.

The Complainant has sustained its burden of adequately alleging that the Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent has not rebutted any of Complainantís allegations nor does the file contain evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Actual or Constructive Knowledge

One factor found to support a finding of bad faith is Respondentís knowledge of the Complainantís mark when Respondent registered the Domain Names. Complainant has alleged, without refutation, that Respondent had actual and constructive knowledge of the TRIP.COM mark. Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

Failure to Respond to Requests to Transfer

A second factor is Respondentís refusal to voluntarily transfer the Domain Name. On November 2, 2000, Trip authorized the dispatch of a cease and desist letter to Deamone via Express Mail and electronic mail. Trip advised Deamone of its trademark rights in connection with the TRIP.COM trademark. Trip demanded that Deamone cease and desist from offering for sale and claiming ownership in the Domain Name. Trip also demanded that Deamone take all actions necessary to transfer the registration of the Domain Name to Trip. To this date, Deamone has not responded to Trip regarding the November 2, 2000 cease and desist letter.

After receipt of the cease and desist letter, Deamone removed the Domain Name from the list of domain names for sale. Here, Deamone permitted the domain names for auction to be printed as the infringing marks had been removed. Respondentís action indicates that he did get the cease and desist letter and refused to voluntarily transfer.

Use of Entire Mark Without Plausible Good Faith Use

A third factor is the use of Complainantís entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant, based on facts essentially the same as those set forth in this Complaint, that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2001), paragraph 7.

Respondentís Domain Name uses the entirety of Complainantís trademark, namely the phrase "trip.com." No plausible explanation exists as to why Respondent selected the name "trip.com" as part of the Domain Name other than to trade on the goodwill of Complainant.

Respondent has failed to come forward with any facts to contradict the assertions of Complainant.

Offer to Sell to Public

A fourth factor is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondentís offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.

Complainantís allegation that Respondent offered to sell his ownership of the Domain Name was discussed above. The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000).

The evidence establishes: (i) actual and constructive knowledge by Respondent of Complainantís rights in the TRIP.COM mark upon the registration of the Domain Name; (ii) Respondentís failure to respond to requests to transfer, (iii) the use of Complainantís entire mark creating an absence of any plausible use of the Domain Name that would constitute good faith and (iv) an offer to sell the Domain Name to the public.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

To the extent that Respondent has the mailing addresses under the names D. N. Deamone and Daniel N. Deamone at Box 20300, St. Catharines, Ontario L2M 7W7 Canada, he has indicated that he claims no interest in the Domain Name. Therefore, the Sole Panelists finds that under these circumstances the Domain Name should be transferred to Complainant.

To the extent that Respondent has mailing address is P. O. Box 803, Niagara Falls, New York 14302 ,USA, the Sole Panelist concludes (a) that the Domain Name <www-trip.com> is confusingly similar to Complainantís registered trademark TRIP.COM, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Trip.com, Inc.

 


 

Richard W. Page
Sole Panelist

Dated: November 4, 2001