WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BookIt.com Inc. v. Whois Privacy Services Pty Ltd., Douglas Baxster
Case No. D2011-1450
1. The Parties
The Complainant is BookIt.com Inc. of Panama City Beach, Florida, United States of America (“U.S.”) represented by Akerman Senterfitt, U.S.
The Respondents are Whois Privacy Services Pty Ltd. and Douglas Baxster of Fortitude Valley, Australia and Sacramento, California, U.S., respectively.
2. The Domain Name and Registrar
The disputed domain name <boookit.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2011. On August 29, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On August 29, 2011, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent Douglas Baxster was the listed registrant and providing the contact details.1
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 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on October 5, 2011. 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 a provider of online travel services through its website at “www.bookit.com”, including vacation packages, airfare, hotel reservations, car rentals, cruises, and other travel arrangements. The Complainant has provided travel services under the mark BOOKIT.COM since 2004, and is the owner of two trademark registrations for BOOKIT.COM in the U.S., the first of which was issued by the United States Patent and Trademark Office (“USPTO”) on July 4, 2006, in connection with hotel reservation services.
The disputed domain name <boookit.com> was registered on November 24, 2007. The disputed domain name resolves to a parking page containing advertising links to third-party websites offering travel services similar to those provided by the Complainant under its BOOKIT.COM mark, which include a link to the website of one of the Complainant’s competitors (“www.travelocity.com”).
5. Parties’ Contentions
A. Complainant
The Complainant asserts rights in the service mark BOOKIT.COM based on registration and use. According to the Complainant, the disputed domain name <boookit.com> is confusingly similar to the Complainant’s BOOKIT.COM mark as it differs only by an additional “o”, and is an obvious and deliberate misspelling of the Complainant’s mark.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because it is being used in connection with a pay-per-click website featuring advertising links to third-party websites offering services identical to those provided by the Complainant under its BOOKIT.COM mark. According to the Complainant, the Respondent is seeking to profit from and exploit the Complainant’s mark by diverting Internet users to the Respondent’s pay-per-click parking site. In view of this, the Complainant asserts that the Respondent cannot claim to be making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further asserts that the Respondent has not been commonly known by the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent is this case has engaged in the abusive practice of “typosquatting” in order to misleadingly divert Internet visitors to the Respondent’s pay-per-click site for financial gain. The Complainant argues that the Respondent has engaged in a clear and persistent pattern of typosquatting in respect of the well-known marks of others, which includes the repeated employment of Whois Privacy Service Pty. Ltd to conceal such abusive registrations practices and bad faith behavior.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name: and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain name <boookit.com> is confusingly similar to the Complainant’s BOOKIT.COM mark, in which the Complainant has established rights. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
In this instance, the disputed domain name <boookit.com> differs from the Complainant’s BOOKIT.COM mark only by an additional letter “o”, as shown. This slight alteration does not diminish the confusing similarity of the disputed domain name to the Complainant’s mark in terms of sight, sound and overall impression. Further, this is strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a mark. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website and divert them to the respondent’s website. Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035. The Panel notes that in situations where the disputed domain name is a common or obvious misspelling of a complainant’s mark, confusing similarity normally is found.3
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark in a manner evocative of typosquatting, and there is evidence that the Respondent has engaged in typosquatting in the past. The Respondent is using the disputed domain name in connection with an apparent pay-per-click parking site featuring advertising links to third-party websites offering services competing with those provided by the Complainant under its mark. There is no indication that the Respondent has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations 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; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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 Respondent has not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
In the absence of evidence in the record to the contrary, the Panel concludes that the Respondent most likely acquired the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant’s Mark, and attract Internet users to the Respondent’s websites. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). The facts and circumstances surrounding the Respondent’s registration and use of the disputed domain name are strongly evocative of the abusive process of typosquatting. Further, the evidence indicates that the Respondent is engaged in a persistent practice of typosquatting in relation to the distinctive trademarks of others, including <walgreem.com> (WALGREENS), <fdacebook.com> (FACEBOOK), and <nordstorm.com> (NORDSTROM).4
In view of the foregoing, the Respondent’s use of the disputed domain names to generate pay-per-click advertising revenues does not qualify as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name: or
(ii) circumstances indicating that the 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 the Respondent has engaged in a pattern of such conduct: or
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor: or
(iv) circumstances indicating that the Respondent is using the disputed domain name to intentionally attempt 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 the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
After a thorough review of the record, the Panel concludes that the Respondent’s conduct in this case supports a finding of bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. This is a clear cut case of typosquatting, and as such it is a virtually inescapable conclusion that the Respondent knew of and had in mind the Complainant’s mark when registering the disputed domain name. Based on the undisputed facts and circumstances reflected in the record, the Panel concludes that the Respondent registered and is using the disputed domain name with the intent to exploit and profit from the Complainant’s mark. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. The Panel also finds that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the 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 <boookit.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: October 18, 2011
1 At the time of the filing of the Complaint, the concerned Registrar’s WhoIs records listed Whois Privacy Service Pty Ltd., a privacy protection service, as the registrant of the disputed domain name. The immediately prior domain name registrant, according to historic WhoIs information submitted with the Complaint was Douglas Baxster, and the Complaint averred that Mr. Baxster remained the true registrant of the disputed domain name. When the concerned Registrar responded to the Center’s request for registrar verification three days after the filing of the Complaint, the relevant WhoIs records listed Douglas Baxter as the registrant of the disputed domain name. Unless otherwise indicated the term “Respondent” as used hereinafter refers to Douglas Baxster.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
3 See WIPO Overview 2.0, paragraph 1.10.
4 As is the case here, it appears that the Respondent also employed Whois Privacy Service Pty Ltd. to shield its identity as the registrant of these domain names.