WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orbitz, LLC v Dotsan and Iskra Service
Case No. D2001-1359
1. The Parties
The Complainant is Orbitz, LLC, a Delaware limited liability company, of 200 South Wacker Drive, 19th Floor, Chicago, Illinois 60606, United States of America.
The Respondents are named as Dotsan, 35-37 Sunder Mahal, Mumbai 400021, India and Iskra Service, Ulitsa O.Goga 10-11, Kishinev, MD 10012, MD.
2. The Domain Names and Registrar
The contested domain names are <orbittz.com>, <orditz.com> and <orvitz.com>.
The registrar is BulkRegister.com, Inc., of 10 East Baltimore Street Suite 1500, Baltimore, MD 21202 United States of America.
3. Procedural History
The electronic version of the Complaint was filed on November 15, 2001. The hard copy version of the Complaint was received on November 19, 2001.
On November 20, 2001, the Center transmitted via email to BulkRegister.com a request for registrar verification in connection with this case. On November 21, 2001, the Center received a verification response confirming that the domain names are registered with BulkRegister.com and that the Registrants for the domain names are the Respondents.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On November 26, 2001, the Center formally notified the Respondents of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
In accordance with the ICANN Rules, the last day for submitting a Response was December 16, 2001. The Respondents failed to submit a Response by that date and on December 17, 2001, the Center formally notified them of their failure to submit a Response by that deadline.
On January 7, 2001, the parties were notified that Mr. Swinson had been appointed as the Sole Panelist and that a decision was to be handed down by January 21, 2001 (save exceptional circumstances).
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements; the Complaint was properly notified to the Respondents in accordance with paragraph 2(b) of the ICANN Rules; the Respondents were properly notified of their failure to submit a Response within the time period allowed in the Notification of Complaint and Commencement of Administrative Proceeding in accordance with paragraph 2(b) of the ICANN Rules and the Administrative Panel was properly constituted.
4. Factual Background
The Complainant adopted the "Orbitz" trademark in June 2000 in connection with the offering of online travel agency services. The Complainantís website at <orbitz.com> is well-known, and is a heavily visited Internet travel site. The Complainant has extensively advertised and promoted the "Orbitz" mark and filed applications for registrations in various countries. Registration of the mark has been obtained in New Zealand. Trademark applications (including applications filed in April 2000) are pending in the United States of America.
Respondent Dotsan registered all the domain names in dispute between July 23, 2001, and July 25, 2001.
Respondent Dotsan transferred one of the disputed domain names, <orvitz.com>, to respondent Iskra Service at some point after September 25, 2001.
All of the domain names resolve to a click through casino promotion and ultimately an online travel site belonging to OneTravel.com Inc.
OneTravel.com Inc. is a competitor of the Complainant.
On or about September 22, 2001, Orbitz sent a letter to Dotsan and OneTravel.com Inc. demanding that Dotsan transfer the disputed domain names to the Complainant and that OneTravel.com Inc. block all links from these domains to its travel website. This letter was ignored.
5. Partiesí Contentions
The Complainantís submissions can be summarized as follows:
Complainant has extensive common law rights in the "Orbitz" trademark. The Complainant has filed trademark applications in various countries, including the United States and is the registered owner of the trademark in New Zealand.
The Respondents are joined in the Complaint because one of the domain names, <orvitz.com>, was transferred from the original registrant of all three names (Dotsan) to Iskra Services. However, the <orvitz.com> domain name, like the other two names, continues to link to OneTravel.com Incís travel website and the online casino promotion.
The domain names in dispute are confusingly similar to the Complainantís trademark, there being only a different or additional letter in each case.
The Respondents have no legitimate rights in the disputed domain names. The domain names were registered based on their similarities to the Complainantís "Orbitz" trademark and are being used to attract customers to websites of other companies.
The Respondents are attempting to use the "Orbitz" trademark and associated goodwill to their benefit, either directly or indirectly through the provider of the casino promotion and/or OneTravel.com Inc.
The Respondentsí registration and use of the domain names is evidence of their bad faith. The Respondentsí conduct constitutes "typosquatting", in contravention of the ICANN Policy and Rules.
The Respondent has not submitted a Response.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant.
As a preliminary point, the Complainant has sought to join the Respondents in these proceedings. There is a close degree of similarity between all three disputed domain names. Respondent Dotsan originally registered all three disputed domain names. All disputed domain names resolve to the same casino promotion and travel website. Accordingly, the Panel considers it appropriate for the Respondents to be joined in a common complaint.
6.1 Identical or confusingly similar to a trademark or service mark
The Panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the contested domain name is identical or confusingly similar to that trademark or service mark.
The Complainant has provided evidence as to the fame of the "Orbitz" mark. For example, evidence has been given that over 3.7 million visitors logged on to its website in the month of June 2001. The Complainant has also provided some evidence of trademark applications and registrations of that mark, in particular the registration in New Zealand and the applications pending in the United States of America.
This is sufficient for the Panel to decide that the Complainant does have trademark rights in the "Orbitz" mark within the meaning of Paragraph 4(a)(i) of the ICANN Policy.
As to the similarity of the marks in question, it is clear that the first of the disputed domain names, <orbittz.com>, is confusingly similar to the "Orbitz" mark. Indeed, at a glance, it could be mistaken for being identical. The sole difference between them is the addition of another letter Ďt".
The two other domain names have been varied by the substitution of one letter in each case. In an aural and optical sense, they are both similar to the "Orbitz" mark. There is also scope for similarity and confusion to arise in typing <orbitz.com> given that the letter Ďví is beside the letter Ďbí on a standard keyboard. This leads to the very real possibility of the domain name being mistyped as <orvitz.com>. See, for example, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc, WIPO Case No. D2000-0587.
The Panel finds that all the disputed domain names are confusingly similar to the Complainantís trademark. The Complainant fulfils paragraph 4(a)(i) of the ICANN Policy.
Under Paragraph 4(c) of the ICANN Policy, the Respondents may demonstrate their rights and interests in the contested domain names by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparations to use, the contested domain names or names corresponding to the contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute; or
(ii) they (as individuals, a business, or other organization) have been commonly known by the contested domain names, even if they have acquired no trademark or service mark rights; or
(iii) they are making a legitimate noncommercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests. The Respondents had the opportunity to respond and present evidence, for example, that they have legitimate business and registered their domain names without knowledge of the Complainantís rights. The Respondents chose not to respond or present evidence. The Complainant is not entitled to win simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond.
The Respondents do not appear to be using the disputed domain names in their own right in order to carry on business under those names. There is no similarity between the disputed domain names and the Respondentsí names.
Each of the disputed domain names resolves through an online casino promotion and then the travel site of OneTravel.com Inc., a competitor of the Complainant. In each case, the originally typed domain name disappears. (When the Panel typed in the disputed domain names, they were replaced by a domain name <gotoo.com>.) It is entirely possible therefore that a person meaning to type the <orbitz.com> domain name could mistakenly type one of the disputed domain names instead and be transferred to the OneTravel.com Inc. website without realizing it.
In light of the above, the Panel decides that the Respondents have no rights or legitimate interests in the domain names at issue.
6.3 Bad Faith
Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondents have registered or have acquired the contested domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations 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 the Respondentsí documented out-of-pocket costs directly related to the contested domain names; or
(ii) the Respondents have registered the contested domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondentsí website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentsí website or location or of a product or service on the Respondentsí website or location.
It is clear to the Panel that the Respondents are well aware of the Complainantís service and trademark rights. The only reasonable conclusion is the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the casino promotion and OneTravel.com website by creating a likelihood of confusion with the Complainantís marks. As such, this is clear evidence of registration and use of the disputed domain names in bad faith. See Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587 and Edmunds.com, Inc v WWWEDMUNDS.com and DMUNDS.com, WIPO Case No. D2001-0937. In relation to the disputed domain name that was transferred to Respondent Iskra Service, see also Miles D., Ltd dba Jazz Alley v. Tokaido Shosha, eResolution Case No. AF-0318, and Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513.
The Panel notes the decision Tony Orlando v. Dotsan, (NAF Case No. FA0110000100246), in which Dotsan of Mumbai, India, was the Respondent. The factual circumstances in that case are somewhat similar, and the Respondent in that case appears to be the same as one of the Respondents in this dispute. The Panel does not need to rely upon that decision to reach its conclusion.
The Respondents are using the disputed domain names to drive Internet traffic to the OneTravel.com website, which is a competitor of the Complainant. It appears that the Respondents are using the OneTravel.com partner program to derive revenue, for example, by diverting Internet users who wish to visit the Complainantís website to the OneTravel.com website. It appears that the Respondents partner program ID is 13591.
The Respondentsí websites at the disputed domain names all include the following html code:
It is uncertain to what extent that OneTravel.com is involved in the Respondentsí illegal activities. The Respondent has, however, registered and is using the domain names in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and paragraph 14 of the ICANN Rules, the Panel orders that the contested domain names <orbittz.com>, <orvitz.com> and <orditz.com> be transferred to the Complainant.
Dated: January 20, 2002