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Dale Bock v. Lae Limited [2005] GENDND 1769 (24 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dale Bock v. Lae Limited

Case No. D2005-0709

1. The Parties

The Complainant is Dale Bock, Sherman Oaks, California, United States of America, represented by Kulik, Gottesman, Mouton & Siegel, Sherman Oaks, California, United States of America.

The Respondent is Lae Limited, Surrey, New Malden, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <las-vegas-direct.com> (herein the domain name in dispute) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2005. On July 11, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 11, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 15, 2005. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2005.

The Center appointed J. Nelson Landry as the sole panelist in this matter on September 27, 2005. 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.

On October 7, 2005, the Panel issued a procedural order requesting from the Complainant further evidence of the existence of common law rights. On October 17, 2005, the Complainant provided further evidence in the form of a Further Statement in Support of the Complaint and Further Declaration by the Complainant. The date for rendering a decision was postponed to October  24, 2005.

4. Factual Background

The Complainant registered the domain name <lasvegasdirect.com> in November 1999 and began using it in interstate commerce at about the same period. The site located at the Complainant’s domain name is used by customers to obtain travel information and book trips to Las Vegas.

It appears from the further evidence that the website of the Complainant under the domain name <lasvegasdirect.com> was used continuously, exclusively and increasingly from December 1999 until the Complaint was filed. Sales have increased into millions of dollars (US) per year for the past two years as a result of significant advertising expenditures.

The Respondent registered the domain name in dispute on July 29, 2003.

The Complainant engaged in correspondence with the Respondent on May 14, 2005, in sending an e-mail cease and desist notice, affirming its rights in the trademark LAS VEGAS DIRECT and the corresponding domain name and during that period, which ended on June 7, 2005, attempted to recover the domain name in dispute through financial arrangement. The Complainant offered US$1,000 while the Respondent maintained a non-negotiable demand of US$15,000 on the basis of numerous advantages associated with the domain name in dispute.

On July 1, 2005, the Complainant applied for the registration in the United States of the trademark LAS VEGAS DIRECT in association with four different categories of services identified in application no. 76642064 (herein the “Trademark”). The said application discloses December 22, 1999, as the date of first use for all four categories. The application is presently pending at its initial stage, not having been the subject matter of an office action by the United States Patent and Trademark Office.

The registration of the domain name in dispute, <las-vegas-direct.com>, expired on July 29, 2005, and was subsequently renewed.

5. Parties’ Contentions

A. Complainant

The Complainant submits that he is the owner of common law rights in the LAS VEGAS DIRECT Trademark, by reason of the extensive, continuous, exclusive and progressive use, advertising, and success as shown in the increasing sales under the Trademark and further submits that the Trademark is to be considered by the commercial impression as a whole, not from its separated elements.

With references to United States law and jurisprudence pertaining to similar situations, the Complainant contends that the Trademark, by reason of prima facie evidence of its use, advertising and growing popularity over a period of five years, has achieved secondary meaning, become distinctive of a single source and has been acknowledged as such.

The Complainant alleges that the domain name in dispute is confusingly similar to Complainant’s Trademark and domain name in that it includes the identical terms of the Trademark LAS VEGAS DIRECT, with the only addition being the hyphens, relying on Dr. Sally Jensen v. Dissertationdoctors.com and Dissertation-doctors.com, WIPO Case No. D2003-0348, wherein the panel determined the domain name <dissertation-doctors.com> was confusingly similar to the service mark DISSERTATIONDOCTOR.COM. Similar hyphenated situations have been found to be identical or confusingly similar to the marks in numerous cases. See also Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; The Chancellor, Masters and Scholars of the University of Oxford v. CQ, WIPO Case No. D2001-0920; The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; and Treadyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026.

The Complainant further contends that under his Trademark LAS VEGAS DIRECT he has established a leading travel site concerning Las Vegas, Nevada and that travelers and others in the travel industry would most surely confuse the domain name in dispute as a site with which Complainant is involved and such confusion would exist as to Complainant’s Trademark as well.

According to the Complainant, the Respondent has never been known by or affiliated with the Complainant and Complainant contends that based on the material Respondent posted on its website, the latter clearly intended to do nothing more than divert business from Complainant. Respondent’s only intent was to attract confused potential customers and others in the travel business to its site. Furthermore, there was no intent by the Respondent to use the domain name in dispute in connection with any bona fide offering of services tied to such name.

Thus, for the reasons set out above, according to the Complainant, the Respondent cannot show legitimate interests or rights in <las-vegas-direct.com> as held in Playboy Enterprises International Inc. v. Federico Concas, WIPO Case No. D2001-0745, wherein the panel found the respondent did not have legitimate interests in the domain name because complainant did not authorize the respondent to use its trademark (PLAYBOY) nor register the disputed name.

The Complainant alleges that it has not authorized Respondent to use its Trademark, that the Respondent’s name does not include any part of the domain name in dispute and finally, Respondent could not have been unaware of the success of the <lasvegasdirect.com> name and had constructive notice of the registration of that domain name. See Chernow Communications, supra.

The Complainant submits that “Using a domain name to intentionally attempt, to attract, for commercial gain Internet users to your website or other online location, by incorporating a trademark in its entirety and 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’ . . . demonstrates bad faith.” See PepsiCo, Inc. v. Pepsi, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696; Anheuser-Busch Inc, v. Dot Com Internet Solutions, WIPO Case No. D2001-0500; Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 and Amphenol Corporation v. Applied Interconnect Inc., WIPO Case No. D2001-0296 and Jensen case, supra, where it was held that registration of a misspelling creates such confusion.

According to the Complainant, the fact that <lasvegasdirect.com> was registered years prior to <las-vegas-direct.com>, means that the Respondent had constructive notice of Complainant’s Trademark and that if the Respondent were operating in good faith it would have used a different name, again relying on Chernow Communications, supra and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 wherein the latter case considered that complainant’s numerous trademark registrations for, and its wide reputation in the word “TELSTRA” demonstrated that respondent registered <telstra.org> in bad faith and was evidence of usage in bad faith by respondent; and, on Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

Finally, the Complainant contends that the fact that the Respondent, when contacted by the Complainant about the offending use of the domain name in dispute, offered to sell the domain name for US$15,000 is further evidence of bad faith relying on Teradyne Inc. v. Michael Boyd, WIPO Case No. D2000-0026; Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662, and Société Générale, supra.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent 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 interest in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel has considered the evidence provided by the Complainant. With the assistance of the United States law and jurisprudence referred to, this Panel has no reservations and accepts that the Complainant has sufficiently established the presence and distinctive character of his Trademark. The Panel concludes that the Complainant has common law rights in the Trademark which, by reason of its continuous, exclusive and progressive use and advertising, has significant goodwill associated thereto.

Even though more relevant under the second and third elements of the Policy, the Panel notes that the Complainant contends that under its Trademark and domain name LASVEGASDIRECT.COM, he has established himself as a leading provider of online hotel reservation services concerning Las Vegas, Nevada. In the present circumstances, having regard to the volume of visitors to his website, more that 2,000 daily, the Panel considers it very plausible that travelers and others in the travel industry would most surely confuse the domain name in dispute as a site with which Complainant is involved and such confusion would exist as to Complainant’s Trademark as well.

The Panel has no difficulty in this case in finding that the domain name in dispute is confusingly similar to Complainant’s Trademark. The domain name in dispute, <las-vegas-direct.com>, includes the identical terms of the Trademark with the simple addition of a hyphen between the elements. The Complainant relied on and cited earlier UDRP decisions in which the panel held that such minor distinctions did not prevent them from stating that domain names were identical or confusingly similar to the Trademark. The Panel agrees with such position.

The first criterion has been met.

B. Rights or Legitimate Interests

Respondent has not filed any response in these proceedings. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in dispute by stating that the Respondent has never been known by the name <las-vegas-direct.com>, the domain name in dispute, nor do its activities constitute legitimate non-commercial or fair use of the domain name in dispute.

Furthermore, as it appears from the unchallenged evidence, the Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trademark. As held in Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745, the Respondent does not have legitimate interests in the domain name because the Complainant did not authorize the Respondent to use his Trademark nor to register the domain name in dispute.

There is no evidence that the Respondent has ever engaged in any legitimate business under the domain name in dispute. It appears that the website associated with the domain name in dispute was used to promote travel services in competition with the travel services of the Complainant (Annex I to the Complaint). Currently, however, the domain name in dispute does not resolve to any active website. There is evidence that the Respondent’s action constitutes an attempt to extort money from the Complainant in trying to sell the domain name in dispute for more than its registration costs. The Respondent did not rebut the affirmation that his only intent was to attract confused potential customers and others in the travel business to its website and that it intended to do nothing more than divert business from the Complainant.

The Panel finds that the Respondent had no intent to use the domain name in dispute in connection with any bona fide offering of goods or services under the domain name in dispute.

Thus, for these above reasons, the Respondent cannot show legitimate interests or rights in the domain name in dispute and the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name in dispute.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has 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 the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the Trademark or service mark from reflecting the Trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on Respondent’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name was registered and used in bad faith.

The Panel agrees with Complainant’s submission and the UDRP decisions cited that using a domain name to “intentionally attempt to attract, for commercial gain Internet users to one’s website or other online location, by incorporating a trademark in its entirety and creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation or endorsement of one’s website or location or of a product or service on one’s website or location demonstrates bad faith.” The Panel adopts the decisions cited by the Complainant.

Considering the evidence adduced, this Panel finds it plausible that the Respondent knew of Complainant’s Trademark and that if the Respondent were operating in good faith it would have used a different name.

Finally upon reviewing the exchange of communications between the parties in their attempt at settling the matter, it is clear to this Panel that while the Complainant offered to reimburse Respondent’s reasonable cost for the registration of the domain name in dispute, the Respondent’s persistence at demanding US$15,000 to sell it, is evidence of bad faith as held in the Teradyne, Inc., Wal-Mart Stores, Inc. and Société Générale cases, supra.

On the basis of the facts in evidence and the UDRP cases cited, the Panel finds that the domain name in dispute was registered in bad faith and has been used in bad faith.

The third criterion has been met.

7. Decision

For all the foregoing reasons, the Panel concludes that:

(a) the domain name <las-vegas-direct.com> is confusingly similar to the Complainant’s Trademark;

(b) the Respondent has no rights or legitimate interests in the domain name in dispute;

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

Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <las-vegas-direct.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Date: October 24,2005