DECISION

Vacation St. Croix v. Simon Pinthna

Claim Number: FA0202000105185

PARTIES

Complainant is Vacation St. Croix, Christiansted, U.S.Virgin Islands (“Complainant”) represented by Vincent Colianni, II, of Colianni & Colianni.  Respondent is Simon Pinthna, Munich, Germany (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <vacationstcroix.com>, registered with BulkRegister.

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 February 25, 2002; the Forum received a hard copy of the Complaint on February 27, 2002.

On February 26, 2002, BulkRegister confirmed by e-mail to the Forum that the domain name <vacationstcroix.com> is registered with BulkRegister and that Respondent is the current registrant of the name.  BulkRegister has verified that Respondent is bound by the BulkRegister 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 March 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 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@vacationstcroix.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 April 3, 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:

The <vacationstcroix.com> domain name is identical to Complainant's VACATION ST. CROIX mark.  Respondent has no rights or legitimate interests in the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not file a Response in this proceeding.

FINDINGS

Complainant does business under the name VACATION ST. CROIX.  It uses the name for all advertising, marketing, leasing and management of its vacation villa rental properties on St. Croix.  Complainant has used the name since 1997, and has invested large sums of money in the name by placing ads in travel magazines, newspapers and telephone directories.  Complainant also established a website at <vacationstx.com> in 2000.  Complainant wanted to register <vacationstcroix.com> but found that Respondent, a competitor of Complainant had already registered the domain name.

Respondent registered the disputed domain name on May 24, 1999.  Respondent is commonly known as Rent-a-Villa, and offers services that compete with Complainant’s at the <vacationstcroix.com> domain name.

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 the 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.

Identical to and/or Confusingly Similar

Complainant has established that it has rights in the VACATION ST. CROIX mark because it has used it as a trade name since 1997.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).  See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Respondent’s <vacationstcroix.com> domain name is identical to Complainant’s mark because it incorporates the entirety of the mark and merely adds the generic top-level domain name “.com.”  The addition of a generic top-level domain name is not enough to create a distinct mark capable of overcoming a claim of confusing similarity.  See 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); see also 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant has established its rights to and legitimate interest in the mark contained in its entirety in the domain name that Respondent registered.  However, Respondent has failed to come forward with a Response and therefore the Panel is permitted to presume that Respondent has no rights or legitimate interests in the disputed domain name.  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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is using a confusingly similar domain name to divert Complainant’s customers to Respondent’s website by creating a likelihood of confusion as to the source and sponsorship of the services offered at <vacationstcroix.com>.  This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

Respondent is known as Rent-a-Villa and Respondent is not commonly known as <vacationstcroix.com>.  Therefore, Respondent does not have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name and Respondent is not using the domain name in connection with a legitimate or fair use).

Respondent is not using the disputed domain name in connection with a legitimate noncommercial or fair use because Respondent is intentionally diverting Complainant’s customers to its own website by creating a likelihood of confusion as to the source, affiliation and sponsorship of <vacationstcroix.com>.  This type of use does not create rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the disputed domain name in bad faith because Respondent knowingly is using Complainant’s trade name to offer services in competition with Complainant’s services and is therefore disrupting Complainant’s business and creating user confusion.  This type of activity is considered to be in bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent.  The Panel is permitted to find that Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

Furthermore, it can be inferred that Respondent intended to benefit financially from the use of Complainant’s trade name on the Internet and therefore Respondent’s registration of the disputed domain name was in bad faith pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website for commercial gain).

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 shall be hereby granted.  Accordingly, it is Ordered that the domain name <vacationstcroix.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 17, 2002

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