WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

priceline.com LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-2806

1. The Parties

The Complainant is priceline.com LLC, United States of America (“United States” or “US”), represented by Bryan Cave Leighton Paisner, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <xpriceline.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 October 22, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 11, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 13, 2020.

The Center verified that the Complaint together with the amended 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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.

The Center appointed Alexandre Nappey as the sole panelist in this matter on December 18, 2020.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 Delaware limited liability company, which provides customers with online booking services for airline tickets, hotel reservations, rental car reservations, and other travel-related goods and services.

Since at least as early as 1999, the Complainant has maintained an active and extensive presence on the Internet, including through its primary website “www.priceline.com”, where it provides travel agency and travel booking goods and services. Customers who visit “www.priceline.com” can book hotels, flights, rental cars, cruises and vacation packages.

The Complainant owns several trademarks composed of the term “PRICELINE”, including:

- US Registration PRICELINE No. 2,272,659), registered on August 24, 1999 in classes 39 and 42,

- US Registration PRICELINE.COM No. 2,481,112, registered on August 28, 2001, in classes 39 and 42.

The disputed domain name <xpriceline.com> was registered on May 15, 2020.

At the time the Complaint was filed, the disputed domain name was redirecting to third-party commercial websites.

5. Parties’ Contentions

A. Complainant

The Complainant first alleges that the disputed domain name <xpriceline.com> is confusingly similar to its earlier trademark PRICELINE, to the point of creating confusion.

The disputed domain name incorporates the Complainant’s earlier trademark PRICELINE in its entirety within the disputed domain name.

This addition of a single letter to the Complainant’s mark does not obviate confusion.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous and distinctive PRICELINE marks in any way or manner;

- The Complainant’s PRICELINE marks are well-known throughout the United States and in various other jurisdictions throughout the world;

- The Respondent has no means to establish that it is or ever has been commonly known as “Priceline” or any variation thereof;

- The disputed domain name wholly incorporates the Complainant’s PRICELINE marks and simply adds a single letter “x.” As such, the Domain Name is registered for and is used to lure consumers to an imposter’s site for commercial gain.

The Respondent is not making any legitimate noncommercial use of the disputed domain name.

Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

First, the disputed domain name is plainly designed to trade on the reputation and goodwill of the Complainant and its PRICELINE marks for financial gain. The Respondent utilizes an infringing domain name to divert potential users (a) away from the Complainant’s primary website at “www,priceline.com”, (b) away from the Complainant’s authentic PRICELINE brand services, and (c) toward the Respondent’s website.

Second, the Respondent registered the disputed domain namee, which is identical (except for one letter) and/or confusingly similar to the Complainant’s PRICELINE marks and uses it for websites that automatically redirect to third-party commercial websites.

Third, the Respondent’s complete lack of intellectual property rights in the disputed domain name at issue further demonstrates bad faith in adopting and using the disputed domain name.

Fourth, the Respondent registered the disputed domain name in May 2020, more than two decades after the Complainant began using the mark.

Fifth, the Respondent is a serial cyber squatter who has engaged in a pattern of registering domain names to profit from trademark owners’ names and consumer confusion.

The Complainant concludes that the Respondent continues to wrongfully use the Complainant’s PRICELINE marks to draw users to its website, create confusion, and improperly reap commercial profit through diverted sales and/or potential illegitimate activities. The Respondent’s use of the PRICELINE marks is illegal and improper under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in PRICELINE and in PRICELINE.COM, which predate the registration of the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the registered marks PRICELINE and PRICELINE.COM, owned by the Complainant.

Indeed, the disputed domain name incorporates the entirety of the Complainant’s PRICELINE and PRICELINE.COM trademarks with the mere addition of the extra letter “x” which does not prevent a finding of confusing similarity as the Complainant’s mark are still clearly recognizable. See Skyscanner Limited v. Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd. WIPO Case No. D2020-0104

Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate non-commercial 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.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its PRICELINE trademark.

It results from the available record that the Respondent does not own any right in the term “priceline” nor is commonly known by the disputed domain name.

Moreover, the Respondent has been involved in numerous previous cases and even described as a serial cybersquatter who has registered numerous domain names incorporating well-known trademarks. See Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 online 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

Since PRICELINE is a well-known trademark and there is no evidenced relationship between the Parties, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name <xpriceline.com>. Moreover, the Panel also finds that the Respondent was likely aware of the Complainant’s domain name <priceline.com> at the time it registered the disputed domain name.

Furthermore, the Complainant has shown that the disputed domain name redirected to third-party websites that include suspicious pop-up windows that could be distributing malware or undesired applications.

Moreover, it appears that the Respondent has been the unsuccessful respondent in no less than 151 proceedings under the Policy.(e.g.: Government Employees Insurance Company v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2869; Carvana, LLC v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2756; Proctor.IO Incorporated v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2692; Sanofi v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2613).

It is then reasonable to infer that the Respondent has engaged in a pattern of cybersquatting, such as the conduct in this case.

In the light of the above, the Panel finds that the Respondent’s use of the disputed domain name cannot therefore constitute use of the disputed domain name for a bona fide offering of goods or services.

The Panel finds from the available record that the Respondent registered and using the disputed domain name in bad faith and therefore the third requirement of paragraph 4(a) of the Policy has been established.

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 <xpriceline.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: January 1, 2021