The Complainant is Royal Caribbean Cruises Ltd., United States of America, represented by Sanchez Fischer Levine, LLP, United States of America.
The Respondent is Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <royalcartibbean.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2019.
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” 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 August 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on October 2, 2019. 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 Complainant is a cruise line operator, which is based in Miami, Florida, United States of America. It has used the service mark ROYAL CARIBBEAN in commerce since January 1970 and this mark was first registered in June 1986.
The disputed domain name was registered on March 22, 2019. Attempts by Internet users to visit the website at the disputed domain name take them to a third party website, with in the “.pw” country code Top Level Domain (“ccTLD”), which may be used for commercial web services. This contains solely a notice advising those visiting the website that their version of a well-known proprietary software program is out of date and inviting them to update it directly from the website in order to continue. The Complainant says that the program available for download is malware.
The Complainant says that the disputed domain name is identical or confusingly similar to a service mark in which it has rights. It is the proprietor of a service mark for ROYAL CARIBBEAN namely United States Trademark, registration no. 1,397,148 for ROYAL CARIBBEAN, registered on June 10,1986 in international trade mark class 39.
The disputed domain name is an exact reproduction of the Complainant’s service mark save for the addition of a letter “t” after the “r” in CARIBBEAN. Such an addition does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark. See, for example The Bonita Bay Group, Inc. et al. v. Total Concept, Inc., WIPO Case No. D2003-0126.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent registered the disputed domain name many years after the Complainant had registered its ROYAL CARIBBEAN service mark and long after the Complainant began using its service mark in commerce.
ROYAL CARIBBEAN is an inherently distinctive term which serves to identify the Complainant as a source of certain products and services. The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s ROYAL CARIBBEAN mark for any purpose, nor is it commonly known as “royalcartibbean.com”. Accordingly, it has not established rights or an interest in the disputed domain name. Moreover, the disputed domain name currently automatically redirects Internet users to a website which invites them to download malware.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out, without limitation, four circumstances in which bad faith registration and use will be found. The circumstance set out at paragraph 4(b)(iv) is if a complainant can establish that by using the domain name, a respondent attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as the source of the website or a product or service on it.
Previous UDRP panels have confirmed that the overriding objective of the Policy is to curb the registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trade mark of another (see, for example, Rockstar Games v. Texas International Property Associates, WIPO Case No. D2007-0501). The Respondent is using the disputed domain name to profit from and exploit the Complainant’s ROYAL CARIBBEAN trademark and to misdirect Internet users to its own website. It is also using the disputed domain name in connection with a revenue-generating scheme in respect of which the Respondent receives some compensation from revenues generated by passing itself off as an extension of the Complainant’s brand name. Moreover, by redirecting Internet users to another website containing malware, the Respondent likely obtains invaluable personal data from those users who are, in fact, attempting to access the Complainant’s website.
Furthermore, the very nature of the Respondent’s domain name registration evidences bad faith. The Respondent knowingly registered the disputed domain name in order to capitalize on the consumer recognition of the Complainant’s ROYAL CARIBBEAN trademark. This designation is unique and distinctive such that it is unlikely that the Respondent devised the term “royalcartibbean.com” on its own. This factor alone weights in favour of a bad faith finding against the Respondent (see, for example, Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323).
The Respondent did not reply to the Complainant’s contentions.
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has provided details of its United States service mark for ROYAL CARIBBEAN, as set out above. These establish the Complainant’s rights in this mark.
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s ROYAL CARIBBEAN trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The only difference between the Complainant’s mark and the disputed domain name is the addition of an additional and extraneous “t” as the fourth letter to the “CARIBBEAN” component of the mark. This does not serve to render the disputed domain name dissimilar to the Complainant’s mark. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name.
So far as the first circumstance is concerned, section 2.13.1 of the WIPO Overview 3.0 explains that “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
The Complainant has not provided any direct evidence that the website to which the dispute domain name resolves is actually distributing malware. However, the only content on the website comprises a notice that the software of the Internet user accessing the website is out of date and that it is necessary to download updated software in order to continue. Notices of this type are a widely known means of installing malware on the computers of Internet users and there are no indications that, save for the notice, there is any actual content on the website itself. In addition, the Respondent has not sought to challenge the Complainant’s assertion that the programme downloadable from the website is malware. It is therefore the Panel’s view that, on a balance of probabilities, this is likely to be the case. However, even if it is not, the use of the disputed domain name solely to point to a third party website containing a notice of the type described above, self-evidently does not comprise an offering of goods and services, whether bona fide or otherwise.
The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and such use as has been made of it is not noncommercial in character.
As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy this burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
Section 3.4 of the WIPO Overview 3.0 explains that “[p]anels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution”.
The Respondent is not actually using its own website to create confusion between it and the Complainant. Rather, it is directing Internet users to a third party website where they are invited to download the software programme. But the effect is essentially the same as if the third party website was that of the Respondent, in that Internet users seeking the Respondent’s website have automatically been redirected to it.
It is not known why the Respondent has redirected the disputed domain name to the third party website or how it might be benefitting from having done so and it is therefore unclear as whether its conduct falls within one or more of the specific circumstances evidencing bad faith and use which are set out at paragraph 4(b) of the Policy. However, those circumstances are expressed to be without limitation, and conduct by a respondent which is essentially the same in its intention and effect as one or more of those circumstances will be considered in a broadly similar way. See, for example, Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303 and the panel’s comment that: “Whilst certainly confusing and disruptive it is not clear that the Respondent [created malware] for commercial gain or that it is a competitor of the Complainant. Howeverit is clear that the motive was malicious. As such even though it cannot be held that the Respondent’s conduct falls strictly within one of the specific examples of conduct that constitutes bad faith set out in the Policy, including the two set out above, these examples are non exhaustive. Due to the deceptive and malicious conduct of the Respondent the Panelist finds that the Domain Name has been registered and used in bad faith”.
The Panel takes a similar view; it is inherently an act of bad faith to redirect Internet users (many, or all, of whom will have been seeking the Complainant’s website) to a third party website containing malware. The use by the Respondent of a privacy service to mask the identity of the underlying registrant is, in the circumstances of this Complaint, a further indication of bad faith; see section 3.6 of the WIPO Overview 3.0.
Lastly, to the extent that the Respondent’s very limited use of the disputed domain name comprises, or is close to, passive holding, the circumstances of the Respondent’s registration and limited use support a finding of bad faith passive holding; see section 3.3 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <royalcartibbean.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: October 16, 2019