The Complainants are Viking River Cruises, Inc. of Woodland Hills, California, United States of America (US) and Viking River Cruises (Bermuda) Ltd. of Hamilton, Bermuda, represented by AZB & Partners, India.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, US / Kiran Bhandari of Pune, Maharashtra, India.
The disputed domain name <vikingcruisesindia.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent a Complaint Deficiency Notification to the Complainant on September 4, 2018. The Complainant filed an amended Complaint on September 5, 2018, curing the deficiency.
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 September 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 17, 2018. 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.
The Complainants are part of a group offering river (and ocean) cruise lines services, having started its activities in 1997 in Russia, currently having its head-quarters in Basel, Switzerland but offering services in different parts of Asia, Europe, Africa, Australia, and the Americas.
The second Complainant is the owner of the following trademarks, amongst several others (Annex 14 to the Complainant):
- Swiss Trademark Registration No. 2P-450198 for VIKING RIVER CRUISES, filed on January 23, 1998 and registered on March 20, 1998, in classes 39 and 42;
- Swiss Trademark Registration No. 606307, for VIKING CRUISES, filed on August 6, 2010 and registered on October 8, 2010, in class 39; and
- United States of America Trademark Registration No. 4514283, for VIKING CRUISES, filed on May 20, 2012 and registered on April 15, 2014, in class 39.
The disputed domain name <vikingcruisesindia.com> was registered on July 18, 2014 and presently resolves to a parked page, displaying a link for the purchase of the disputed domain name.
The Complainants (hereinafter jointly referred to as “Complainant”) assert to be one of the world’s leading river (and ocean) cruise lines, currently operating a fleet of more than 60 vessels and having received several awards and distinctions such as “best River Cruise Line” by “Condé Nast Traveler” in their “2017 Readers’ Choice Awards” as well as rated, for the third year in a row, the “best Ocean Cruise Line” by “Travel + Leisure” readers in their “World’s Best Awards 2018”.
The Complainant also asserts to have been using the service mark VIKING RIVER CRUISES for the last 21 years, as well as the domain name <vikingrivercruises.com>, registered on February 25, 1999, more recently adopting variations thereof such as VIKING CRUISES, duly registered in several countries around the world (Annex 14 to the Complaint).
Prior to initiating this procedure the Complainant contacted through an agent the Respondent, by sending an email inquiring about their interest in selling the disputed domain name. The Respondent then replied such message, stating that he was open to sell it “should the price be worthwhile”. On the exchange of messages that followed, the Complainant’s representative disclosed that it was acting on the Complainant’s behalf and offered USD 1,000 for the immediate transfer of the disputed domain name, to which the Respondent replied stating that, as a cruise specialist he intended to use the disputed domain name without any conflict with the Complainant. The Respondent furthermore stated that, since he had invested much money in his business, it was not meaningful to give up the disputed domain name for USD 1,000. (Annexes 8-9 to the Complaint).
The Complainant further investigated the Respondent and was able to learn that he is one of the directors of an entity named “Cruise Club Vacation Pvt. Ltd.” based out of the city of Pune in the state of Maharashtra, India, offering cruise vacations through the website “www.cruiseclub.in” (Annex 11 to the Complaint), as well as locating the Respondent’s LinkedIn profile where he presents himself as co-founder of such entity (Annex 13 to the Complaint).
The Complainant therefore submits that the disputed domain name reproduces the Complainant’s mark in its entirety and is evidently confusingly similar therewith.
As to the Respondent’s lack of legitimate rights or interests in the disputed domain name the Complainant states that:
i. the Respondent has no association of any kind with the Complainant, having registered the disputed domain name without the Complainant’s authorization;
ii. the Respondent is not known by the disputed domain name which consists solely of the Complainant’s reputed and well-known trademark in the cruise industry, which the Respondent exploits;
iii. the lack of use of the disputed domain name in connection with a legitimate offer of goods or services further corroborate the Respondent’s lack or rights or legitimate interest over the disputed domain name.
As to the registration and use of the disputed domain name in bad faith, the Complainant argues that the Respondent was undoubtedly aware of the Complainant and its trademarks given that the Respondent offers bookings on many of the Complainant’s cruises through the website “www.cruiseclub.in” which the Respondent founded. In addition to that, the exchange of messages prior to this procedure indicate that the Respondent was clearly willing to sell the disputed domain name for a high figure, as he declined the Complainant’s offer of USD 1,000. Respondent was furthermore trying to prevent the Complainant from securing a domain name corresponding to its trademarks.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
The Complainant has shown that it is the owner of registered trademarks for VIKING RIVER CRUISES, and VIKING CRUISES. The disputed domain name incorporates the latter mark in its entirety with the mere addition of the geographical term “india” which is not sufficient to add any distinction to it.
As indicated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where the relevant trademark is recognizable within the disputed domain name, the addition of a geographical term, does not prevent a finding of confusing similarity.
The first element of the Policy has been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name given that the Respondent competes with the Complainant through the website “www.cruiseclub.in” which he founded (Annex 13 to the Complaint). The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, and has thereby failed to rebut the Complainant’s prima facie case. Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of rights or legitimate interests. The parking of the disputed domain name and offering it for sale ever since its registration further indicates such lack of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
This case presents the following circumstances which indicate bad faith registration and use of the disputed domain name given that:
a) the disputed domain name was registered on July 18, 2014, which is long after the Complainant initiated the use of its mark in 1997;
b) the Respondent evidently was aware of the Complainant since he offers bookings on many of the Complainant’s cruises through the website “www.cruiseclub.in” which he founded (as per his LinkedIn profile, Annex 13 to the Complaint);
c) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name, being it parked ever since its registration (and in such parked page there is a specific link for anyone interested in purchasing it);
d) the exchange of messages prior to this procedure indicate that the Respondent was clearly willing to sell the disputed domain name for a high figure, having declined the Complainant’s offer of USD 1,000; and
e) the absence of any reply to the Complaint.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
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 <vikingcruisesindia.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: October 31, 2018