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Generic Top Level Domain Name (gTLD) Decisions |
Carlson Wagonlit Travel Inc v. Scott
Loughrey
Claim Number: FA0201000103968
PARTIES
Complainant
is Carlson Wagonlit Travel, Inc.,
Minneapolis, MN (“Complainant”) represented by Dan Lee, of Carlson Wagonlit
Travel, Inc. Respondent is Scott Loughrey, Baltimore, MD
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <carlsonwagonlittravel.com>,
registered with Stargate Communications
Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 21, 2002; the Forum received
a hard copy of the
Complaint on January 21, 2002.
On
January 22, 2002, Stargate Communications Inc. confirmed by e-mail to the Forum
that the domain name <carlsonwagonlittravel.com>
is registered with Stargate Communications Inc. and that Respondent is the
current registrant of the name. Stargate
Communications Inc. has verified that Respondent is bound by the Stargate
Communications Inc. registration agreement and
has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
February 4, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 25, 2002 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing
contacts, and to postmaster@carlsonwagonlittravel.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 4, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
1.
The disputed domain name <carlsonwagonlittravel.com> is identical to Complainant’s CARLSON
WAGONLIT TRAVEL mark.
2. Respondent has not used the disputed domain name
in connection with a bona fide offering of goods or services and is not making
a legitimate noncommercial or fair use of the domain name. Further, Respondent has never been commonly
known by the domain name, therefore, Respondent does not have rights or
legitimate interests
with respect to <carlsonwagonlittravel.com>.
3.
The disputed domain name was registered to obtain money from Complainant. Respondent has registered other domain names
corresponding to individual and company names in an effort to sell them back to
these
individuals and companies.
Respondent is not actively using the domain name. And, Respondent has intentionally attempted
to attract Internet users, for commercial gain, by creating a likelihood of
confusion
with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s domain name.
Therefore, Respondent has registered and used the disputed domain name
in bad faith.
B.
Respondent did not file a Response in this proceeding.
FINDINGS
Complainant operates a travel agency and
offers a variety of travel related services. Complainant has used CARLSON
WAGONLIT TRAVEL
in commerce continuously since 1994. Complainant registered CARLSON WAGONLIT TRAVEL with the United
States Patent and Trademark Office on September 9, 1997, Reg. No. 2,094,018.
Respondent registered the domain name, <carlsonwagonlittravel.com>, on December 13, 2001. Respondent has not acquired a license to use
Complainant’s mark in a corresponding domain name. There is no evidence presented on how the disputed domain name
has been used and it currently remains undeveloped. According to Complainant, Respondent offered to sell the disputed
domain name for an amount in excess of Respondent’s direct out-of-pocket
costs.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate
pursuant to paragraph 14(b) of the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(1)
the domain name registered by Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant
has rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Complainant has established its rights in
the CARLSON WAGONLIT TRAVEL mark through federal registration and continuous
use.
Respondent’s <carlsonwagonlittravel.com> domain name is identical to Complainant’s mark. There are two minor differences between
Respondent’s domain name and Complainant’s mark. The first minor difference is that the disputed domain name does
not incorporate the spaces in Complainant’s mark. However, since it is impossible to incorporate spaces in a domain
name, this trivial alteration does not distinguish <carlsonwagonlittravel.com> from CARLSON WAGONLIT TRAVEL. See
Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible
in domain names”); see
also Little Six, Inc. v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar.
31, 2001) (finding that the <bodybyvictoria.com> domain name is identical
to Complainant’s BODY
BY VICTORIA mark).
The other minor change between the domain name and Complainant’s mark is
the addition of the generic top-level domain “.com.” However, the addition of “.com” does not distinguish the disputed
domain name from Complainant’s registered mark. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that <carlsonwagonlittravel.com> is identical to Complainant’s CARLSON
WAGONLIT TRAVEL mark.
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to file a Response
in this matter. Therefore, the Panel
may conclude that Respondent
has no rights or legitimate interests in the disputed domain name, <carlsonwagonlittravel.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names).
According to Complainant, Respondent has
passively held the disputed domain name since registration and has offered to
sell the domain
name in dispute to Complainant for consideration in excess of
out-of-pocket costs. Since Respondent
has failed to file a Response, the Panel may presume that Complainant’s
assertions are correct. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that Respondent’s failure to produce requested
documentation supports a finding for Complainant). Therefore, Respondent has failed to demonstrate its use of the
disputed domain name is in connection with a bona fide offering of
goods or
service as pursuant to Policy ¶ 4(c)(i).
See J. Paul Getty Trust v.
Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding
rights or legitimate interests do not exist when one has made no use of the
websites
that are located at the domain names at issue, other than to sell the
domain names for profit).
Respondent registered a domain name that
is identical to Complainant’s registered mark.
Based on the evidence provided, Respondent has passively held the domain
name and has offered to sell it to Complainant. It can be inferred from Respondent’s behavior that Respondent
registered the domain name solely for the purpose of selling it to
Complainant. Thus Respondent’s actions
do not demonstrate a legitimate noncommercial or fair use of <carlsonwagonlittravel.com> and
therefore, Respondent fails to satisfy Policy ¶ 4(c)(iii). See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27,
2000) (finding that the Respondent has no rights or legitimate interests in the
domain name where
it appeared that the domain name was registered for ultimate
use by the Complainant).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent acted
in bad faith in registering and holding the domain name passively. According to the evidence presented,
Respondent has offered the disputed domain name for consideration in excess of
out-of-pocket
costs. Such action by
Respondent is considered to in bad faith.
See Dynojet Research, Inc.
v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent
demonstrated bad faith when he requested monetary compensation beyond
out of
pocket costs in exchange for the registered domain name); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that Respondent used the domain name in bad faith because he offered
to sell the domain name
for valuable consideration in excess of any out of
pocket costs).
By registering a domain name that is
identical to Complainant’s mark, the Panel may presume that Respondent
registered <carlsonwagonlittravel.com> to prevent Complainant from reflecting its
mark in a corresponding domain name.
Respondent has also engaged in pattern of such conduct in the past. See Squatting For Dollars (June
12, 2000), available at
http://salon.com/politics/feature/2000/06/12/squatter (The website reports that
Scott Loughery, a cybersquater of some reknown, has
registed numerous domain
names of political candidates and has been known to ask for money in exhange
for the domain names). Therefore, the
Panel finds that Respondent has registered the disputed domain name in bad faith
as pursuant to Policy ¶ 4(b)(ii). See
America Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a
pattern of conduct where Respondent has registered many domain names unrelated
to the Respondent’s business which infringe on famous marks and websites); see
also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6,
2000) (finding bad faith where the Respondent engaged in the practice of
registering domain names containing
the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent has
registered numerous domain names that infringe upon the Complainant’s
marks and
in addition, Respondent has registered domain names that infringe upon other
entities’ marks).
In addition, Respondent’s passive holding
of the disputed domain name is evidence that Respondent has used <carlsonwagonlittravel.com> in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000) (finding that “it is possible, in certain circumstances, for inactivity
by the Respondent to amount
to the domain name being used in bad faith”); see
also Cruzeiro Licenciamentos Ltda v.
Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere
passive holding of a domain name can qualify as bad faith if the domain name
owner’s conduct creates the impression that the name is for sale).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
be hereby granted.
Accordingly, it is Ordered that the
domain name <carlsonwagonlittravel.com> be transferred from Respondent
to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: March 11, 2002.
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