WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Caribbean Cruises, Ltd. v. James Booth, BQDN.com
Case No. D2019-1042
1. The Parties
The Complainant is Royal Caribbean Cruises, Ltd., United States of America (“USA”), represented by Carey Rodriguez Milian Gonya, LLP, USA.
The Respondent is James Booth, BQDN.com, United Arab Emirates (“UAE”), represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <rcc.com> 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 6, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 9, 2019, the Respondent sent an informal email communication to the Center.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. On May 27, 2019, the Respondent requested an automatic four-day extension period to file a Response. The Response was filed with the Center on June 8, 2019.
The Center appointed Andrew D. S. Lothian, Michael A. Albert and Adam Taylor as panelists in this matter on July 3, 2019. The Panel finds that it was properly constituted. Each member of 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 limited company with a place of business in Miami, Florida, USA. The Complainant is the owner of USA registered trademark No. 1667873 for the word mark ROYAL CARRIBEAN CRUISES LTD. registered on December 10, 1991 for cruise ship services and transportation of passengers by ship in international class 39. The Complainant also claims unregistered trademark rights in the initialism corresponding to its ROYAL CARRIBEAN CRUISES LTD. registered mark, namely RCCL. The Complainant uses the domain name <rccl.com> for all of its employees’ email addresses and for communications to and from the Complainant’s consumers. Said domain name redirects web users to the Complainant’s website at “www.royalcaribbean.com”. According to the WhoIs record, said domain name was created on March 6, 1995 although the Complainant does not say whether it is the original registrant or for how long it has used such domain name.
The Respondent is a domain name broker, specializing in valuable three-character domain names, who brokers domain names for others and on his own account. He was among the winners of the “2019 Master of Domains Awards” announced at NamesCon 2019 in Las Vegas in recognition of being one of the ten highest-grossing individual domain name brokers in 2018 and received a similar award in 2018. The 2019 citation states that since 2015 the Respondent has brokered over 250 three-letter and several two-letter “.com” domain names. The Respondent has received media recognition in connection with his brokerage activities in the aftermarket for domain names.
The disputed domain name was originally registered on July 29, 1992 by a third party. The Respondent purchased the disputed domain name from a global engineering firm on or about September 16, 2016 for a five-figure USD sum. Said firm no longer required the disputed domain name following a corporate acquisition of the original registrant, which had used the disputed domain name from 1992 to 2015.
The disputed domain name currently resolves to a parking page containing the following message: “RCC.com is listed for sale!” The Respondent states that on or about March 25, 2019, he turned on email for the disputed domain name and noted that it received emails intended for the Complainant, among other parties. The Respondent proceeded to hire a broker to reach out to the Complainant. Said broker corresponded with a member of the Complainant’s staff between April 12, 2019, and April 16, 2019.
On April 15, 2019, the Respondent’s broker sent an email to a member of the Complainant’s staff which contained what appeared to be several mis-addressed communications from the Complainant’s customers. Said broker’s email stated, inter alia, “Do you want me to continue to forward these emails? / I think you have a major problem here, not just because of the confusion from your customers not getting their emails answered but also email security. At some point RCC.com is going to sell and the new owners may not be as nice to forward your info. / Let me know if you have time to talk this week.” Said Complainant’s staff member states in an Affidavit of May 6, 2019, that the email correspondence forwarded by the Respondent’s broker contained confidential information pertaining to the Complainant’s guests and business operations, which had been obtained by the Respondent. The Affidavit also states the said staff member telephoned the Respondent’s broker on April 16, 2019 to discuss the potential sale of the disputed domain name in exchange for USD 250,000.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims common law rights in the RCCL mark on the basis of long and substantial use in connection with the advertising of vacation services and merchandise, pointing to an article regarding a train transfer service offered by the Complainant in Alaska which refers to it as “RCCL”, a bag available for sale online in the Complainant’s “Royal Gifts” collection, described as an “RCCL canvas tote bag”, and a Google search for “RCCL”, the first two pages of which yield links and webpages associated with or related to the Complainant and its services. The Complainant specifically notes that one of the search results refers to a search for the term “#RCCL” on the “www.instagram.com” website which the Complainant demonstrates returns images relating to the Complainant and its cruise ships. The Complainant also notes that users of the “Twitter” service also refer to the Complainant’s business by way of the same hashtag. The Complainant asserts that the general public recognizes the RCCL mark as an identifier for the Complainant’s goods and services.
The Complainant submits that a grammatical analysis of the disputed domain name shows its incorporation of the first three letters of the Complainant’s RCCL mark, adding that a visual and phonetic comparison also weigh heavily in favor of a finding of confusing similarity. The Complainant notes that the disputed domain name is missing only one consonant at the end of the Complainant’s mark and otherwise is identical. The Complainant adds that the Respondent’s broker admitted to the Complainant that consumers regularly confuse the disputed domain name for the Complainant’s <rccl.com> domain name, as subsequently evidenced by various emails. The Complainant says that consumers commonly mistake the registered mark “Royal Caribbean Cruises Ltd.” as “RCC”.
The Complainant asserts that the RCCL mark has no meaning other than to identify the Complainant as the source of cruise ship and vacation services, adding that this is an abbreviation of its ROYAL CARIBBEAN CRUISES LTD. mark. The Complainant submits that the Respondent is neither a licensee of the Complainant nor is otherwise authorized to use its RCCL mark for any purpose, nor is commonly known as “RCC”. The Complainant sets out the history of the disputed domain name from 1992 to 2015, and evidences a redirection of Internet users from the disputed domain name to another domain name connected with the previous owner of the disputed domain name on March 13, 2016, followed by a redirection to a different domain name used by the Respondent on October 3, 2016.
The Complainant asserts that the Respondent has not established that it will use the disputed domain name in connection with a bona fide offering of goods or services, noting that the Respondent is only offering the disputed domain name for sale. The Complainant argues that this warrants a finding of a lack of legitimate interests in the disputed domain name.
The Complainant notes that it is an overarching goal of the Policy to curb abusive registration of domain names where the registrant seeks to profit from and exploit the trademark of another, asserting that bad faith is evident in the present case. The Complainant states that the website associated with the disputed domain name only offers it for sale and makes no other commercial use, adding that bulk domain purchasers have an affirmative obligation to avoid the registration of trademark-abusive domain names. The Complainant asserts that the Respondent is engaging in a scheme of abusive registration and acquisition of domain names, primarily to profit from and exploit the Complainant’s RCCL mark, citing the correspondence between the Complainant and the Respondent’s broker. The Complainant adds that bad faith is also shown by the Respondent’s configuration of an email server to capture mis-sent emails by the Complainant’s customers and by its holding of such information, which included confidential data, for ransom.
The Complainant describes the Respondent’s actions as an “extortion scheme” and a “typosquatting scheme” which demonstrate bad faith through its offering of the disputed domain name for sale in exchange for a price of USD 250,000, being considerably in excess of its out-of-pocket costs.
The Respondent requests that the Complaint be denied. The Respondent sets out his credentials in domain name brokerage and states that he registered the disputed domain name because he is a well-established broker specializing in high value three-letter domain names and saw value in the disputed domain name because it corresponded to countless actual and potential meanings as an acronym.
The Respondent produces evidence that “RCC” is an acronym for all manner of things and that at least 50 meanings are mentioned by “www.wikipedia.com”. The Respondent states that the Complainant is among the most remote parties that would have any rights or legitimate interests in the disputed domain name given the absence of corresponding registered trademark rights. The Respondent provides evidence from the WIPO Global Brand Database that there are over 350 trademarks registered all over the world for RCC, both before and after the Respondent registered the disputed domain name. The Respondent argues that this demonstrates that the disputed domain name is particularly apt and corresponds to an acronym adopted by existing users and subsequent new entrants to the marketplace. The Respondent expands his evidence of the number of users of the “RCC” acronym with reference to the volume of corresponding trademarks registered in the USA, company names registered in the United Kingdom of Great Britain and Northern Ireland, names of corporations registered in the states of New York and California, USA, Canadian entity names and trademarks, company names on the website “www.linkedin.com” and various searches on the Google search engine. The Respondent provides evidence of multiple third party inquiries to purchase the disputed domain name over the course of the Respondent’s ownership, including an offer for a five-figure USD sum, and states that this confirms the disputed domain name’s widespread appeal.
The Respondent submits that it has never used the disputed domain name for any infringing activity and that it was not until about March 26, 2019, being two and a half years following its acquisition, that the Respondent contacted the Complainant via its agent, following the switching on of email. The Respondent states that most errant email received was not for the Complainant and provides a list, adding that the majority was intended for an Australian company and that some email was intended for the previous owner of the disputed domain name.
The Respondent asserts that the Complainant has offered rather meager evidence of its usage of RCCL and has not explained when it claims to have commenced such use. The Respondent notes that the train transfer service claim is represented by a single article written well after the disputed domain name was registered and that information is lacking regarding the tote bag including whether it actually features the alleged mark on the bag itself and the period over which it has been for sale. The Respondent adds that the Complainant’s evidence of email address usage, social media and search engine recognition lacks dates or any form of quantification. The Respondent points out that the Complainant has filed a trademark application in the USA for RCCL on May 3, 2019, and yet did not refer to this in the present proceeding, adding that such trademark is based on intent to use rather than any prior use.
The Respondent acknowledges that if the Complainant has established the existence of an unregistered mark in RCCL, it has probably met the low bar of the confusing similarity test under the Policy, while arguing with reference to prior cases under the policy that small differences matter on the Internet due to the need for language economy and that “typos are not necessarily typosquats”.
The Respondent denies that it requires any license or consent from the Complainant to use the disputed domain name and adds that the thousands of entities using “RCC” for all manner of things do not need any such permission. The Respondent argues that there is no evidence of the Complainant’s trademark rights at the time of the Respondent’s registration of the disputed domain name and that accordingly there is no foundation to conclude that the Respondent has no rights and legitimate interests therein, since it was not legally bound to license such mark.
The Respondent cites a variety of cases under the Policy to demonstrate that panels have frequently ruled in favor of respondents regarding domain names corresponding to widely used three-letter acronyms. The Respondent adds that where a ubiquitous acronym domain name forms part of a respondent’s stock-in-trade as a domain name trader, this constitutes use in connection with a bona fide offering of goods and services.
The Respondent submits that the Complainant has failed to make any substantive allegations directed specifically at bad faith registration, as it is bound to do, and that there is a lack of any factual basis to the allegation of bad faith registration aside from mere self-serving inferences. The Respondent argues that absent direct evidence that the Respondent registered the disputed domain name specifically because of the Complainant and/or absent direct proof that a generic domain name was registered solely for the purpose of profiting from the Complainant’s trademark rights, bad faith will be found not to exist. The Respondent states that it is difficult to believe that the value of the disputed domain name has anything to do with the Complainant given ample evidence of widespread third party use by established and new entrants to the marketplace.
The Respondent contends that the Complainant’s claim is too farfetched, namely that the Respondent would pay a five-figure USD sum for the disputed domain name, then wait two and a half years before springing a trap on the Complainant based upon anticipated confusion between the disputed domain name and <rccl.com>. The Respondent notes that it offered the disputed domain name for sale and was in receipt of offers for substantial amounts well before its broker contacted the Complainant. The Respondent contends that the offering of the disputed domain name for its market price does not constitute bad faith, noting that speculating in and trading in generic domain names, including acronyms, can be perfectly permissible under the Policy.
The Respondent acknowledges that its broker “perhaps indelicately and in an embellished manner” pointed out to the Complainant that the Respondent had inadvertently received emails intended for it, noting that despite the Complainant’s claim of extortion the Respondent’s agent neither advised nor suggested that the Respondent would make unlawful use or disclosure of such emails, nor did the Respondent take advantage of any private data. The Respondent contends that the Policy is not intended to punish a legitimate registrant for “an arguably ill-considered solicitation” but is intended for cases where a brand owner is specifically targeted in bad faith.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this section of the analysis, the Panel first considers whether the Complainant possesses UDRP-relevant trademark rights. Secondly, if such rights are found, the disputed domain name is compared with the trademark in order to assess identity or confusing similarity. This first element test is typically regarded as having a low threshold, the intent being to determine whether the Complainant has “a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).
The Complainant in the present case does not possess a registered trademark in the term RCCL although it claims unregistered trademark rights therein, due to its allegedly being a known and widely used initialism for its corporate name and registered trademark. For such a claim to be made out, the evidence on the record must demonstrate that the term has become a distinctive identifier associated with the Complainant or its goods and services. Such evidence might include, for example, the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public (e.g., consumer, industry, media) recognition, or consumer surveys.
The Respondent asserts that the Complainant’s evidence relating to unregistered rights in RCCL is limited and puts forward a number of criticisms relating to the Complainant’s reliance on the train transfer service article and “Royal Gifts” tote bags. The Panel agrees with the Respondent that these items would be insufficient on their own to support the Complainant’s contention. Nevertheless, while the Panel notes the Respondent’s criticism of these aspects of the evidence, together with the Respondent’s comment that the Complainant provides no information as to the duration of its alleged use of the claimed mark, the Panel considers that these are not necessarily fatal to this aspect of the Complainant’s case.
The Panel regards the Complainant’s evidence of the Google search on “RCCL” and the Twitter and Instagram hashtag searches on “#RCCL” as being of particular significance to its claim in respect of unregistered rights. These items indicate a not insubstantial association between the Complainant and “RCCL”, presumably arising either from its business use of the <rccl.com> domain name or from it and its consumers habitually abbreviating its full corporate name and registered trademark into the initialism “RCCL” for convenience. In addition to these factors, the Panel also takes account of the mis-sent email to the disputed domain name referred to in the evidence from both of the Parties. This most probably arises in consequence of the Complainant’s business email use of its <rccl.com> domain name and again is reasonably supportive of the notion that consumers recognize the mark RCCL as synonymous with the Complainant. The Panel does not accept that all of these emails are necessarily typographical errors but rather that the user may have eliminated the “L” from the initialism because this represents the word “Limited”, often dropped when informally referring to a company name. In these circumstances, the Panel is prepared to find that the Complainant has unregistered trademark rights in the mark RCCL for the purpose of the Policy.
The Respondent candidly acknowledges that if such a finding is made, the typical comparison process under the Policy would lead to a finding of confusing similarity between such mark and the disputed domain name. Nevertheless, the Respondent raises a reasonable question regarding whether a four-character mark which is an initialism or acronym can be found to be confusingly similar to a three character domain name which, as here, shares part of the same character set. The Respondent points out that, if a finding of confusing similarity is made in those circumstances, the logical extension is that all four-character initialisms/acronyms would be regarded as confusingly similar to all partially corresponding three-character domain names.
The Panel acknowledges the Respondent’s comments on the comparison exercise. However, given its disposal of the present case on the third element, it is not strictly necessary for the Panel to reach a definitive finding on this particular question. The Panel therefore turns to consider the second and third elements of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Panel accepts that in appropriate circumstances there can be a legitimate trade in valuable three character domain names, such as the disputed domain name. Such a finding has been made in multiple past cases under the Policy. For example, as the panel noted in Compañía Logística de Hidrocarburos CLH S.A. v. Privacy Administrator, Anonymize, Inc. / Sam Dennis, Investments.org Inc, WIPO Case No. D2018-0793, “[…] it is commonly accepted that, absent factors to the contrary in a particular dispute, trading in domain names is a legitimate activity that has grown into a substantial market over the years.” In the opinion of this Panel, “factors to the contrary in a particular dispute” would include indications that the registration of a particular domain name was actuated with bad faith intent in order to target the rights of a particular trademark holder.
In these circumstances, the question of the Respondent’s rights and legitimate interests in this particular case largely turns on whether the disputed domain name was registered and used for the purpose of the Respondent’s alleged good faith activity of trading in ubiquitous three-character domain names or, as alleged by the Complainant, in a bad faith attempt by the Respondent to take unfair advantage of the Complainant and its rights in the RCCL mark. Accordingly, rather than reaching a definitive ruling on the Respondent’s rights and legitimate interests, it is appropriate for the Panel to address the topic of registration and use in bad faith, which in a case such as the present is likely to be determinative of the dispute between the Parties.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The essence of the Complainant’s case is that it has been specifically targeted following the Respondent’s acquisition of the disputed domain name and that the circumstances of the Respondent’s agent’s approach demonstrate both registration and use in bad faith. The Complainant alleges a plan of “extortion”, dating back to such acquisition, evidenced by the high asking price for the disputed domain name, the alleged misuse of confidential customer data and the statement made in correspondence that future purchasers of the disputed domain name might not necessarily be helpful in forwarding on mis-addressed email.
For its part, the Respondent strongly denies that the disputed domain name was registered in bad faith or with any knowledge of the Complainant or its rights in RCCL. The Respondent shows that it paid a substantial price for the disputed domain name and says that it did so in the ordinary course of its domain name trading business because of the ubiquity of the acronym, which gives rise to a substantial value on the open market due to its general appeal to a wide variety of users. The Respondent argues that it could not have had the Complainant in mind at the point of registration as the Complainant’s use of the RCCL mark is too remote from any likely or reasonable contemplation.
The Panel is inclined to favor the Respondent’s case on registration in bad faith, despite the approach of the Respondent’s broker which has at least an appearance of being specifically targeted to the Complainant and its rights. In other circumstances, the nature of such approach might have irrevocably tainted the Respondent’s protestations that it acquired the disputed domain name in good faith. However, on the facts before it, the Panel accepts that the Respondent more probably than not acquired the disputed domain name due to its value as a short, ubiquitous and memorable three-letter string which would be attractive to a wide variety of existing and potential entrants to the marketplace rather than in a bad faith attempt to target one specific rights owner in the form of the Complainant. To a considerable degree, this turns on the limited extent of the uniqueness and fame or well-known nature of the initialism contended for by the Complainant when compared with other actual or possible uses.
The Respondent’s evidence of the ubiquity of the initials “RCC” is compelling and undoubtedly outweighs the Complainant’s evidence relating to the strength of its RCCL initialism. This is not a case where the three letters in question conjure up a particular famous mark in the minds of most people such that knowledge and targeting could reasonably be inferred at the point of registration (see, for example, the panel’s rejection of a complainant’s similar claim that it was commonly known in Europe by the initials “PI”, and that this was comparable to the initialisms for International Business Machines (“IBM”), and Volkswagen (“VW”) (Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001)). There is insufficient evidence before the Panel in this case for it to find that the Complainant’s unregistered initialism is in any such category of trademark and, even if it is, this would not necessarily mean that the RCCL mark could evoke the same association with the shorter form “RCC” as is found in the disputed domain name.
Furthermore, the Panel accepts that the delay of some two and a half years between the acquisition of the disputed domain name and the broker’s approach to the Complainant, during which time the Respondent engaged with multiple other parties regarding a potential sale of the disputed domain name, is also supportive of the Respondent’s case. The Respondent denies any bad faith motivation whatsoever but also submits that any bad faith which might be apparent in the broker’s approach should not be equated with bad faith intent at the point of registration. The Panel accepts that submission in the circumstances of the present case.
The Panel can well understand the Complainant’s concerns regarding the circumstances of the broker’s approach to it. Even the Respondent candidly recognizes that the actions of his broker precipitated the Complaint in this case. The apparent sharing of confidential personal data of the Complainant’s customers (however stumbled upon) between the Respondent and its broker is something which is likely to have raised substantial concerns within the Complainant’s business, as would the broker’s subsequent tactic of raising the risk of such data going further astray following any sale of the disputed domain name to a third party. These are not actions from which the Respondent is entirely distanced, given that he selected the broker to act as his agent and presumably supplied the material with which it made its approach. While the Respondent attempts to play down the issue, describing his broker as proceeding “indelicately and in an embellished manner” and pursuing “an arguably ill-considered solicitation”, the latter phrase appears to the Panel to be something of an understatement. That said, approaches to potentially interested parties to purchase a domain name which has been registered without intent to target a particular rights owner do not automatically constitute registration and use in bad faith in terms of the Policy, even where the manner of approach is particularly ill-judged.
In all of the above circumstances, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name was registered and is being used in bad faith, and the Complaint therefore fails.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Michael A. Albert
Date: July 17, 2019