WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
World Travel Holidays, Inc. V. Paydues, Inc.
Case No. D2012-1128
1. The Parties
Complainant is World Travel Holidays, Inc. of Wilmington, Massachusetts, United States of America (“U.S.”) represented by Espinosa Trueba, PL, U.S.
Respondent is Paydues, Inc. of Santa Fe, New Mexico, U.S.
2. The Domain Name and Registrar
The disputed domain name <cruiseonefranchise.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2012.
The Center appointed Mark Partridge as the sole panelist in this matter on July 3, 2012. 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 offers services in the tour and travel industry under the mark CRUISEONE. Complainant makes these services available through franchises.
Complainant owns the CRUISEONE mark (U.S. Reg. No. 1,799,689, Registered October 19, 1993) for services of arranging vacation cruises.
Complaint also has pending U.S. trademark registration applications for:
A stylized CRUISEONE mark (App. Serial No. 85399994) filed on August 17, 2011, for travel agency services and arranging travel vacations. The trademark examiner issued a Notice of Allowance for the stylized CRUISEONE mark on May 8, 2012.
A stylized CRUISEONE, #1, IN CRUISING, NATIONWIDE mark (App. Serial No. 85400009) filed on August 17, 2011, for travel agency services and arranging travel vacations. The trademark examiner issued a Notice of Allowance for the stylized CRUISEONE, #1, IN CRUISING, NATIONWIDE mark on May 8, 2012.
A stylized CRUISEONE DREAM VACATIONS START HERE mark (App. Serial No. 85400001) filed on August 17, 2011, for travel agency services and arranging travel vacations.
Complainant owns the domain name <cruiseone.com>.
Respondent is Paydues, Inc., identified in the Complaint as an entity of unknown legal status. Respondent owns the disputed domain name <cruiseonefranchise.net>. The disputed domain name is used for a site that provides the option to download a “Franchise Toolkit”. Respondent has failed to respond to the Complaint resulting in its default.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s CRUISEONE service mark, that the disputed domain name fully incorporates Complainant’s trademark and merely adds the descriptive or generic term “franchise” to Complainant’s CRUISEONE mark; and that such use is insufficient to distinguish the disputed domain name from Complainant’s mark.
Complainant further contends that Respondent enhances confusion on the disputed website by referring to the business as “Cruiseone franchise” in some instances and “Cruiseone Franchise” in others. Furthermore, Complainant alleges that Respondent specifically describes Complainant and its business in the “About Us” section of the disputed website. Finally, Complainant contends that Respondent uses Complainant’s contact information under the “Franchise Toolkit” section of the disputed website, falsely suggesting that Complainant is affiliated or otherwise associated with Respondent.
Based on this conduct, Complainant contends that Respondent has no rights or legitimate interests in <cruiseonefranchise.net> because Respondent: has not shown use of the disputed domain name in connection with any bona fide offering of goods or services; has not ever been commonly known by the disputed domain name; has not made a legitimate noncommercial or fair use of the disputed domain name; has not received Complainant’s permission to use the disputed domain name; and is using the disputed domain name to confuse and divert consumers for commercial gain through the sales of counterfeit or third party software.
Complainant finds the use of its contact information and the description of its business on Respondent’s website to be indicative of bad faith domain name registration to intentionally attract consumers for commercial gain by trading off the good will established in the CRUISEONE mark.
Respondent did not reply to Complainant’s contentions by the due date established by the Rules, paragraph 5(a), which was June 26, 2012.
6. Discussion & Findings
A. Identical or Confusingly Similar
Complainant has demonstrated that it owns prior rights in the mark CRUISEONE.
The disputed domain name incorporates Complainant’s CRUISEONE mark entirely into Respondent’s disputed domain name. Prior UDRP proceedings have found that the “incorporation of a trademark in its entirety in a domain name is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark for purposes of the Policy.” Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity because the incorporated trademark is usually found to constitute the dominant or principal component of the domain name. Nintendo of America, Inc. v. Marco Beijen, Beijen Consulting, Pokeman Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070 (The addition of the words “mail”, “post”, “fan”, or “top50” to the word “POKEMON” in the dispute domain name was held to be of minimal impact on what the visitor of the website of focuses on, namely the word “Pokemon”.); Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (“The addition of the non-distinctive terms ‘unlimited’ and ‘downloads’ does nothing to reduce the confusing similarity of the disputed domain name[.]”); Mastercard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (Finding the addition of the generic term “offers” in the domain <mastercard-offers.com> is insufficient to avoid confusion).
The dominant portion of the disputed domain name is identical to Complainant’s CRUISEONE mark. The term “franchise” is an apt descriptive term for Complainant’s services, which adds to the confusing similarity between the mark and the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark, and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent can demonstrate rights or a legitimate interest in <cruiseonefranchise.net> in accordance with paragraph 4(c) of the Policy by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, but this burden shifts to Respondent once Complainant makes a prima facie showing that Respondent lacks rights or legitimate interests. Neusiedler Aktiengesellschaft v. Vinayak Kulkami, WIPO Case No. D2000-1769. Complainant’s burden of proof on this element is light. De Agostini S.p.A v. Marco Cialone, WIPO Case No. DTV2002-0005. After Complainant has met its initial burden of proof, if Respondent fails to submit a response, Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Complainant need only make the allegations and put forward what it can support. Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, citing Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121.
Complainant has shown that Respondent is not authorized to use the CRUISEONE mark and that the disputed domain name is being used to promote a software product that is not known by the CRUISEONE name. There is nothing in the record to indicate that Respondent has any rights or legitimate interests in the disputed domain name.
Complainant has met its burden of proof on this element of its claim. Complainant has put forward the limited available information in support of the Complaint. There is no evidence that the allegations are manifestly misconceived, and Respondent has failed to demonstrate any rights or legitimate interests in <cruiseonefranchise.net>.
C. Registered and Used in Bad Faith
Bad faith registration and use can be found by demonstrating: (i) circumstances indicating that Respondent has registered or acquired the disputed 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 documented out-of-pocket costs directly related to the disputed domain name; (ii) Respondent registered the disputed 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 Respondent has engaged in a pattern of such conduct; (iii) Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed web site or location. Policy, paragraph 4(b).
Respondent did not reply to Complainant’s contentions by the due date established by the Rules, paragraph 5(a), which was June 26, 2012. Accordingly, the Panel may decide the dispute based on the Complaint, accepting all reasonable factual allegations as true, and the Panel may draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
Persuasive factual allegations at hand include Respondent’s use of Complainant’s entire federally registered service mark in the disputed domain name and contact information on “www.cruiseonefranchise.net”. Additionally, Respondent intentionally deceives consumers by misidentifying itself in the “About Us” section by giving a description indicating Respondent is affiliated with Complainant. The Complainant alleges Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion. The appropriate inference that may be drawn is that Respondent registered and used the disputed domain name in bad faith.
The Panel also notes that the panel in a prior UDRP decision, LC Trademarks, Inc. v. PayDues Inc., WIPO Case No. D2011-2125, found Respondent to be a “serial offender” with respect to the Policy. Such serial offenses – an undeniable pattern of registering and using domain names to prevent legitimate trademark and/or service mark owners from reflecting their marks in corresponding domain names – are found by the Panel to be further evidence of bad faith. For other cases evidencing said pattern, see, Valpak Direct Marketing Systems, Inc. v. Paydues Inc., WIPO Case No. D2012-0042; Luby’s Fuddruckers Restaurants, LLC v. Paydues Inc., NAF Claim No. FA1421339; Famous Dave’s of America, Inc. v. Paydues Inc., NAF Claim No. FA1420191; Batteries Plus, LLC v. Jason Rager / Paydues Inc., NAF Claim No. FA1418065; PFIP, LLC v. Paydues Inc, NAF Claim No. FA1411907; Hardee’s Food Systems, Inc., Carl Karcher Enterprises, Inc. v. Jason Rager, Paydues Inc., WIPO Case No. D2011-1905; and Two Men and a Truck, supra; HBH Limited Partnership v. Paydues Inc., WIPO Case No. D2012-0446; Buffalo Wild Wings, Inc. v. Paydues Inc., WIPO Case No. D2012-0319; La Quinta Worldwide, L.L.C. v. Paydues, Inc., WIPO Case No. D2012-0016.
In light of the above, the Panel rules that Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.
For all the forgoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cruiseonefranchise.net> be transferred to Complainant.
Dated: July 27, 2012