WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xanterra Parks & Resorts c/o Kirk Anderson v. Lumsden Quan
Case No. D2017-0307
1. The Parties
The Complainant is Xanterra Parks & Resorts of Greenwood Village, Colorado, United States of America (“United States”), represented by Freeborn & Peters, United States.
The Respondent is Lumsden Quan of San Francisco, California, United States.
2. The Domain Name and Registrar
The disputed domain name <windstar.cruises> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2017. On February 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 22, 2017. The Complainant filed a Supplemental Filing on March 1, 2017,
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on March 24, 2017. 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 date of the Domain Name registration was confirmed by the Registrar to be January 15, 2017.
The Complainant provided evidence of registration for the mark WINDSTAR including, inter alia, United States Registration No. 1,425,182 (registered on January 13, 1987) for a word mark (that predates the date of the Domain Name registration) for “providing cruise services”.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a notice that the site is “under construction”, and the website currently appears to be inactive.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark WINDSTAR in respect of providing cruise services. The Domain Name is confusingly similar to the trademark owned by the Complainant. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially with regard to cruises. Further, that the Respondent owns 253 domain names, which is further evidence of the Respondent’s bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Issue: Supplemental Filing
The Complainant has requested the Panel to substitute its amendment to the Complaint with its Supplemental Filing of March 1, 2017. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings.
The Complainant’s Supplemental Filing adds to its amendment to the Complaint only the argument that the Respondent’s ownership of additional domain names further evidences the Respondent’s bad faith. This point, which could have just as easily been included in the Complaint, neither affects the Panel’s decision nor prejudices the Respondent, who has chosen not to participate in these proceedings. The Panel will thus accept the Complainant’s Supplemental Filing, but has not considered it necessary to give the Respondent an additional opportunity to reply, as the Complainant’s additional argument is, in any event, rejected by the Panel.
7. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(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;
(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 used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for WINDSTAR.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark”.
Further, that although the top-level domain (“TLD”) ordinarily does not have a determinative impact on this element of the test, it is clear that by adding the Complainant’s trademark to the TLD “.cruises” enhances the impact of confusing similarity. Likewise, recent Panel Decisions affirm that new gTLDs such as “.cruises” typically have the same impact as prior generic Top-Level Domains (“gTLD”) on confusing similarity, namely no impact at all (although in some cases may increase the potential for confusing similarity). See, e.g., Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (transferring <canyon.bike>, since “.bike” “exacerbates confusing similarity because it describes a core product of the Complainant”); Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (transferring <snickers.clothing>, since “.clothing” was “directly and closely associated with Complainant’s principal product line” while noting that the consideration of “.clothing” should not suggest that the outcome would have been different if the Panel had not considered the gTLD); Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269 (transferring <zionsbank.holdings>, as “.holdings” did not prevent a finding that the domain was identical or confusingly similar to the ZIONS BANK mark).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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 the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed 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.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the combination of WINDSTAR with the TLD “.cruises”, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with knowledge of the Complainant’s trademark and uses it for the purpose of misleading and diverting Internet traffic. Further, that although the TLD does not have a determinative impact on the first element of the test, it is clear that adding the Complainant’s trademark to the TLD “.cruises” enhances the finding of bad faith on this element of the test.
In addition, that the website remains “under construction” rather than evidencing any other arguably legitimate use supports the Panel’s belief that the Domain Name was registered and is being used in bad faith.
In terms of the Complainant’s argument that the sheer number of domain names owned by a Respondent is determinative evidence of bad faith, perhaps had there been some analysis and evidence provided about which of the many domain names held by the Respondent evidenced bad faith or showed a pattern of behaviour, it could have been relevant and more helpful to the Panel.
Notwithstanding, given the evidence of the Complainant’s prior rights in the trademark and the timing of the registration of the Domain Name with apparent knowledge of the Complainant’s trademark and field of business, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <windstar.cruises> be transferred to the Complainant.
Ellen B Shankman
Date: March 29, 2017