The Complainant is Carnival Plc, Southampton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, United States of America.
The Respondent is Service Online LLC, Kiev, Ukraine.
The disputed domain name <pandocruises.com> is registered with Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2009. On August 27, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On August 28, 2009, Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainRegistry.com 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2009. The hard copy of the Complaint was properly sent to the Respondent's Registrar-confirmed email addresses as well as to the available facsimile number. However it came to the attention of the Center on September 9, 2009 that the electronic notification of the Complaint did not include the email address as confirmed by the Registrar: <email@example.com>, in light of which the Center re-notified the Complaint and reset the due date for Response to October 6, 2009. Taking into account the above and the fact that the Respondent has evidently engaged in communications regarding proceedings as discussed further below, the Panel finds the Complaint to have been properly notified.
The Panel has been provided with evidence of communications between the Respondent and the Center regarding the language of the proceedings. The Respondent has asserted that the language of the proceedings should be in Russian. However in an email communication to the Center dated September 4, 2009 the registrar Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainRegistry.com has confirmed that English was the language used to inform the Registrant of both the Domain Registration Agreement and the Customer Master Agreement during the domain name registration process.
The Respondent has been notified by the Center on September 9, 2009 that should the Respondent wish to file the response in Russian, the Center will forward this Response to the Panel and it will be at the Panel's discretion to consider such Response.
The Respondent did not submit a formal Response to the Complaint. Accordingly, the Center notified the Respondent's default on October 9, 2009.
The Center appointed Irina V. Savelieva as the sole panelist in this matter. 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. As discussed further below, the Panel is satisfied that the appropriate language of proceedings in the present case is English.
The Complainant, Carnival Plc is a global cruise company based in the United Kingdom and is one of the largest cruise and travel companies operating 85 ships with revenues of approximate USD 15 billion. Carnival Plc's portfolio includes a number of leading cruise brands, including P&O CRUISES.
P&O CRUISES is one of the oldest brands in the industry and has been in use in connection with “cruise services” since 1843. The Peninsular and Oriental Steam Navigation Company (“POSN” ) is the owner of the “P&O” brand and owns numerous trademarks, including Community Trade Mark Registration No. 4,840,302 for P&O CRUISES, UK Trade Mark Registration Nos. 1,328,204, 1,328,205, 1,328,207 and 1,320,208 for P&O and United States Registration No. 3,480,659 for P&O CRUISES.
The Complainant enjoys and exclusive, perpetual license from POSN to use the name P&O and all derivations of the brand for cruise services, which includes the use for domain name purposes.
The Complainant owns and maintains presence on the Internet through its website “www.pocruises.com”, which is owned by P & O Cruises Ltd, a wholly-owned subsidiary of Carnival Plc.
Carnival Plc has acquired and enjoys significant goodwill from P&O marks.
The Respondent, Service Online LLC of Ukraine has registered the disputed domain name <pandocruises.com> on September 26, 2005. The disputed domain name <pandocruises.com> is currently used by the Respondent for providing links to websites that are related to Carnival Plc's Cruises and other websites offering various cruise holidays.
(a) The disputed domain name <pandocruises.com> is confusingly similar to and incorporates the marks owned by the Complainant:
- The Complainant owns a broad range of trademarks, which incorporate the mark P&O CRUISES. This is reflected in the <pocruises.com> domain name.
- The disputed domain name <pandocruises.com> incorporates the P&O CRUISES trademark, which is central to the Complainant's trademarks.
- The use of the word “and” rather than an ampersand is an accepted replacement for an ampersand, which cannot be used in domain names.
(b) The Respondent has no rights or legitimate interests in the domain name:
- The Complainant is aware that the Respondent's website contained advertising links for numerous websites promoting services offered by the Complainant and its direct competitors up until April 27, 2009.
- After the Complainant sent a cease-and-desist letter to Alexander Korgun, the formerly listed Registrant, the website changed to include a link to a Wikipedia article on an area in Republic of Bolivia.
- The Complainant believes, but cannot prove that the Respondent is the alter ego or Alexander Korgun. The Complainant submits that the Respondent has shielded his name in the past on previous other domain name registrations.
- The Complainant submits that the acts of the Respondent alone demonstrate that the domain name is not used in good faith whether or not the domain name is controlled by Alexander Korgun.
- Carnival Plc has not permitted, licensed or otherwise consented to use by the Respondent of the P&O CRUISES mark.
- The Respondent has no legitimate right to use of the domain name incorporating the P&O CRUISES mark.
- The Respondent is not commonly known by the domain name and cannot demonstrate a legitimate interest in the domain name.
- The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
(c) The Respondent registered and is using the domain name in bad faith:
- It is assumed that the Respondent has actual and constructive knowledge of Carnival Plc's rights based on extensive and worldwide usage of the P&O CRUISES mark and goodwill associated with such use.
- There is evidence that the public associates “pando” with P&O based on a third party website that uses “www.pando.cruises.co.uk” as the heading for the section covering cruises under the P&O CRUISES mark.
- On the set of facts, the Respondent registered the disputed domain name for the purpose of attracting Internet users to the Respondent's website for commercial gain by creating likelihood of confusion with the Complainant's trademarks.
- Bad faith can be found also in the fact that the Respondent advertises links to direct competitors of the Complainant.
- The “initial interest confusion” that lured the Internet user to Respondent's website can be another indication of bad faith.
The Respondent did not reply to the Complainant's contentions.
The Respondent was given notice of this proceeding in accordance with the Rules.
However the Respondent failed to file a Response to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner.
The Panel finds that the Respondent has been given sufficient opportunity to file a Response. A discussion on the language of the proceedings in itself is not a formal Response. The Panel further finds the issue of the language of the Proceedings to have been fairly resolved in accordance with the Rules, and is satisfied that in the present circumstances the appropriate language of proceedings is English.
Alexander Korgun has challenged the language of the Proceedings. The Center informed Alexander Korgun that if he so wished, he could submit a response in Russian and then it would be up to the Panel to decide on whether to accept such Response and decide what other procedural actions this may entail. However, Alexander Korgun failed to submit a Response in Russian, hence the Panel believes he had no real intention of submitting a Response and the communications in respect of the language of the Proceedings may have been little more than a time delaying tactic.
Further the Panel finds there it unnecessary to consider the issue of whether there may be any implied alter ego connection between Alexander Korgun and Service Online LLC as suggested by the Complainant. Service Online LLC in their letter of September 14, 2009 stated that the disputed domain name was transferred to Directi Internet Solutions PVT. Ltd. in the interest of their client. Service Online LLC then said that Alexander Korgun should update the details of the Registrant of the domain name. However he failed to do so. The Panel finds it likely that it may have been more convenient for Alexander Korgun in terms of hiding his identity not to have his name as the Registrant; hence, he probably never updated the details. But in any event, the WhoIs data and the Registrar confirm the registrant of record of the disputed domain name as Service Online LLC, and the Panel is satisfied that the formally named Respondent has been properly identified.
The Panel finds that the Respondent has been given fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.
The Complainant has registered the Community Trade Mark P&O CRUISES. This mark is also registered in the United States. Furthermore the Complainant has various registrations for P&O mark in the United Kingdom. The Complainant submits that the disputed domain name <pandocruises.com> is confusingly similar to the trademark P&O CRUISES as the domain name incorporates the whole of the trademark, this being a registered trademark.
The use of the word “and” instead of the ampersand is a widely used practice as domain names do not allow the use of the ampersand. Hence Internet users expect the ampersand to be either the word “and” or instead be completely ignored (AT&T Corp. v. ATandT.com, WIPO Case No. D2002-1178). The Panel finds that the disputed domain name <pandocruises.com> is in fact confusingly similar to the Complainant's trademark P&O CRUISES.
Furthermore, the Panel finds that the disputed domain name may be directly associated in the minds of the consumers with the Complainant's trademarks.
The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant's assertions, it is up to the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy. By not responding to the Complainant's contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.
Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the domain name in connection with the bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
According to the documents submitted by the Complainant and a subsequent verification by the Panel, the home page of the website under the disputed domain name <pandocruises.com> displays a list of websites related to cruise holidays, both linking the Complainant's website and those of Complainant's direct competitors (Annex E to the Complaint). The website itself does not offer any goods or services; it merely provides links to other websites.
The Panel finds no evidence that the Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.
Secondly, as for the Respondent's proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel recalls that the Respondent registered the disputed domain name on September 26, 2005 (Annex A to the Complaint). The Complainant asserts that the mark P&O has been in use since 1843. Further the Complainant has registered P&O CRUISES mark at least in the United States and at European Community level.
The Panel believes that the Respondent knew about the Complainant's trademark at the time of registration of the disputed domain name.
It is the Panel's view, on the present facts, that the Respondent probably registered the disputed domain name with awareness of the Complainant's products and trademarks as well as goodwill associated with them.
Thus, the Panel finds that the Respondent's use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy.
The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainant's official website to the Respondent's website for potential commercial gain.
According to the evidence submitted by the Complainant, the home page under the disputed domain name <pandocruises.com> displays links to websites that offer products and services in relation to cruises (Annex E to the Complaint).
The Panel finds that the Respondent's website could have attracted potential attention from the public because of its probable association with the Complainant's products and services. At the same time it has created a risk of confusion with the Complainant's products and trademarks as to the source, sponsorship, affiliation or endorsement of its website.
The Panel's independent verification has shown that the current use of the Respondent's website at the domain name <pandocruises.com> is still the same. The fact that now the domain name has a heading that says “Pando Cruises” and links to a Wikipedia article on Pando Department of Bolivia (a landlocked country) shows a deliberate attempt to mask the use of the domain name. The Panel notes that the links to other website are still present. It is therefore clear that the Respondent continues using the disputed domain name.
The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy.
The Panel holds that the Respondent “has registered the disputed domain name in bad faith”. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent must have known the Complainant's products and should have been aware of the trademarks of the Complainant. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.
The fact that the Respondent's use of the disputed domain name has created a likelihood of confusion with the Complainant's products and trademarks under paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still being used in bad faith.
The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith.
The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <pandocruises.com> be transferred to the Complainant.
Irina V. Savelieva
Dated: November 17, 2009