WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
priceline.com Incorporated v. ShredEx
Case No. D2010-1042
1. The Parties
Complainant is priceline.com Incorporated of Norwalk, Connecticut, United States of America, represented by the law firm Downs Rachlin & Martin, PLLC, United States of America.
Respondent is ShredEx of San Marcos, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <nameyourpricescanning.com>, <nameyourpriceshredding.com>, and <pricelineshredding.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2010. On June 24 and 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 25, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, (a) confirming that Respondent named in the Complaint for the domain names <nameyourpricescanning.com> and <nameyourpriceshredding.com> is listed as the registrant and providing the contact details; and (b) disclosing registrant and contact information for the domain name <pricelineshredding.com> which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on July 1, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 2, 2010.1 The Center verified that the Complaint as amended 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 July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for a Response was July 25, 2010. Respondent did not submit any response. The Center accordingly notified Respondent’s default on July 26, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 4, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding.2 The Panel has submitted his 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 provides online travel services (for example, airline tickets, hotel rooms, rental cars) by allowing customers to book them at its website “www.priceline.com”. One service offered by Complainant is branded “NAME YOUR OWN PRICE.” Using this service a prospective customer may designate a price he or she is prepared to pay for a particular travel service or a travel package using various travel criteria. After entry of these data, Complainant’s search engine reviews its database to verify availability.
Complainant holds many of trademarks registered on the primary register of the United States Patent and Trademark Office (USPTO) that consist of or include PRICELINE, PRICELINE.COM, or NAME YOUR OWN PRICE. Complainant has used these marks extensively for the promotion of its services continuously since 1998; all have been the subject of heavy advertising on the Internet and other national and international media.
Respondent registered the disputed domain names in August 2009. Each disputed domain name resolves to a website at which Respondent offers a customer the opportunity to name its price for scanning (<nameyourpricescanning.com>) or shredding (<nameyourpriceshredding.com> and <pricelineshredding.com>). At each such website the prospective customer enters relevant information (location, number of boxes, type of documents, for example) and the price it seeks. On neither website is any reference to Complainant or any travel services.
5. Parties’ Contentions
Complainant contends as follows:
Complainant holds rights in its PRICELINE and NAME YOUR OWN PRICE marks by reason of its USPTO-registered marks and its longtime use of these marks for its services. Each disputed domain name incorporates one of Complainant’s marks as its dominant feature, followed by a word that describes Respondent’s services.
Complainant has never authorized Respondent to use any of its service marks and, except for its use at the websites to which the disputed domain names resolve, Respondent has never been known by either of them. The use to which Respondent has put the disputed domain names is not legitimate under the Policy because it misleadingly implies affiliation with or approval of Complainant. Respondent’s use of the disputed domain names is for commercial purposes. Given the widespread promotion of Complainant’s marks, it is “implausible” that Respondent was unaware of them, and “equally implausible” that Respondent selected them for any reason other than to take advantage of the renown of Complainant’s marks.
For similar reasons, Respondent registered and has been using the disputed domain names in bad faith, by seeking to profit from the goodwill attached to Complainant’s service marks. Complainant alleges that this conduct falls within the examples of bad faith set out in clauses (iii) and (iv) of paragraph 4(b) of the Policy.
Respondent did not reply to the Complaint.
6. Discussion and Findings
A. Effect of Respondent's Default.
Unlike civil litigation in the United States, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter or result in the Policy equivalent of a default judgment. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.6; The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022; Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. The Panel will proceed to evaluate Complainant's evidence, and his own examination of Respondent’s website, against the requirements of paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar.
Complainant has demonstrated rights in its PRICELINE and NAME YOUR OWN PRICE marks sufficient to invoke the Policy. One of the disputed domain names incorporates the PRICELINE mark as its dominant feature, and the other two are confusingly similar to the NAME YOUR OWN PRICE marks. A long string of unbroken precedent holds that when the marks at issue are incorporated as the dominant feature of a domain name, for Policy purposes confusion is not obviated by addition of an everyday descriptive word. This Policy element has been satisfied.
C. Rights or Legitimate Interests.
Complainant has made out its prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent has never been authorized to use Complainant’s marks and has never been known by the disputed domain names independently of the content at the websites to which the disputed domain names resolve. The burden of production thus shifts to Respondent to demonstrate a right or legitimate interest. Respondent has stood silent, and nothing in the evidentiary record in this proceeding suggests a defense. Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith.
Nothing in the record, or in the Panel’s review of the content at the disputed domain names, indicates or suggests that Respondent competes in any way with Complainant. Respondent offers scanning and shredding services for documents; Complainant offers travel services. Paragraph 4(b)(iii) of the Policy is therefore not applicable to this proceeding, as the parties are not competitors.
The evidence however does support Complainant’s contention that Respondent selected the disputed domain names because of their similarity to Complainant’s marks, and that such conduct falls within the example of bad faith set paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” Respondent might possibly have selected the domain names that use “name your price” because of the business method it has chosen, but Respondent’s selection of a domain name that includes the word “priceline”, and its using that domain name to resolve to one of the other disputed domain names, reveal Respondent’s knowledge of Complainant and its marks and an intent to benefit from those marks’ renown.
Nothing on Respondent’s websites makes any use of the term “priceline,” and its selections of them for a dominant feature of its domain names can be explained in no manner other than cybersquatting. That act of bad faith shows a desire for a free ride on one of Complainant’s marks, and taints its selection of the two disputed domain names that imitate Complainant’s other prominent mark. Complainant has proven registration and use in bad faith.
Complainant cannot, solely by reason of its marks, prevent any third party from offering any good or service in a customer-names-the-price format. Trademark law may limit use of the marks in respect to goods or services not within the trademark classes in which Complainant holds trademark rights. The Policy though does condemn Respondent’s use of Complainant’s marks in its domain names, provided the three elements of paragraph 4(a) have been satisfied, as the Panel has found established here.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <nameyourpricescanning.com>, <nameyourpriceshredding.com>, and <pricelineshredding.com> be transferred to Complainant.
Richard G. Lyon
Dated: August 12, 2010